Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA531842
`ESTTA Tracking number:
`04/11/2013
`
`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
`Granted to Date
`of previous
`extension
`Address
`
`Health Net, Inc.
`04/13/2013
`
`21650 Oxnard Street
`Woodland Hills, CA 91367
`UNITED STATES
`
`Attorney
`information
`
`Richard H. Zaitlen
`Pillsbury Winthrop Shaw Pittman LLP
`725 S. Figueroa St., Suite 2800
`Los Angeles, CA 90017-5406
`UNITED STATES
`richard.zaitlen@pillsburylaw.com, neil.vohra@pillsburylaw.com,
`inga.delarosa@pillsburylaw.com, la-tmdocketing@pillsburylaw.com
`Applicant Information
`
`77513890
`04/11/2013
`
`NONE
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`HARVEY NICHOLS AND COMPANY LIMITED
`109-125 Knightsbridge
`London, SW1X7RJ
`UNITED KINGDOM
`Goods/Services Affected by Opposition
`
`02/12/2013
`04/13/2013
`
`NONE
`
`Class 036.
`All goods and services in the class are opposed, namely: lease purchase financing services; financial
`card services, namely, credit card, charge card, cash card, check guarantee card, purchase card,
`payment card and debit card services; actuarial services; valuations and financial appraisals of real
`estate; real estate acquisition for others and real property management services; arranging of leases
`and rental agreements for real estate; real estate leasing services; commercial property leasing
`services; banking services; financial administration of retirement plans; trustee services; charitable
`fund raising services; mutual funds services; cash management services; factoring agency services,
`namely, factoring and invoice discounting services; automatic teller machine services, namely, cash
`dispensing services; foreign exchange transaction services; merchant banking and investment
`banking services; savings account services; financial and investment management services; stock
`brokerage services; unit trust services, namely, financial trust operations; financial planning and
`investment advisory services; financial research services; pension fund services, namely,
`administration of employee pension funds; provision of financial information; providing loans secured
`by commercial paper and other assets; safe deposit box services
`
`

`
`Class 041.
`All goods and services in the class are opposed, namely: Providing fitness and exercise facilities
`Class 044.
`All goods and services in the class are opposed, namely: Cosmetics analysis; facial treatment
`services, namely, facials and cosmetic peels; cosmetic body services, namely, massages, body
`wraps, and body scrubs; cosmetic electrolysis; cosmetic make-up services, namely, services of a
`make-up artist; cosmetic surgery services; advisory services relating to beauty treatment; beauty care
`services, namely, beauty treatments and beauty consulting; beauty salon services; beauty salons;
`beauty therapy services; consultation services relating to beauty care; dental services; tooth polishing
`services; tooth whitening services; hairdressing services; tanning salon services; solarium services;
`artificial tanning services
`
`Grounds for Opposition
`
`Deceptiveness
`False suggestion of a connection
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(a)
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`2729806
`
`06/24/2003
`
`Word Mark
`Design Mark
`
`H N
`
`Application Date
`
`09/01/2000
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2000/11/00 First Use In Commerce: 2000/11/00
`COMPUTERIZED ONLINE RETAIL SERVICES FEATURING HEALTH PLANS
`AND HEALTH CARE PRODUCTS AND SERVICES; HEALTH CARE
`UTILIZATION, REVIEW AND COST CONTAINMENT SERVICES; MEDICAL
`COST MANAGEMENT FOR THE HEALTH BENEFIT PLANS OF OTHERS;
`MEDICAL BILLING INFORMATION RETRIEVAL SERVICES; LITIGATION
`MANAGEMENT SERVICES
`Class 036. First use: First Use: 2000/11/00 First Use In Commerce: 2000/11/00
`HEALTH, MEDICAL AND HOSPITALIZATION INSURANCE SERVICES,
`NAMELY INSURANCE CONSULTATION IN THE FIELD OF EMPLOYEE
`HEALTH PROGRAMS INCLUDING ACTING AS A LIAISON BETWEEN
`HEALTH CARE PROVIDERS AND INSURANCE COMPANIES AND OTHERS
`RESPONSIBLE FOR PAYMENT OF HEALTH CARE SERVICES, AND
`ARRANGING AND NEGOTIATING AGREED-UPON RATES FOR MEDICAL
`SERVICES TO SUBSCRIBERS' EMPLOYEES; INSURANCE UNDERWRITING
`
`

`
`IN THE FIELD OF HEALTH CARE, MEDICAL, AND HOSPITALIZATION;
`ORGANIZING PRE-PAID HEALTH PLANS; UNDERWRITING OF HEALTH
`CARE INDEMNITY INSURANCE PLANS; ADMINISTRATION AND
`ORGANIZATION OF PRE-PAID HEALTH CARE PLANS TO ELIGIBLE
`MEDICARE BENEFICIARIES; HEALTH CARE INSURANCE CLAIMS
`PROCESSING; ADMINISTRATION AND UNDERWRITING OF EMPLOYEE
`HEALTH CARE PLANS AND EMPLOYEE BENEFIT PLANS;
`ADMINISTRATION OF WORKERS' COMPENSATION CLAIMS AND
`BENEFITS; HEALTH CARE BENEFITS ADMINISTRATION; PROVIDING
`INFORMATION IN THE FIELD OF HEALTH INSURANCE VIA A GLOBAL
`COMPUTER NETWORK
`Class 041. First use: First Use: 2000/11/00 First Use In Commerce: 2000/11/00
`EDUCATIONAL SERVICES, NAMELY, PROVIDING CLASSES, SEMINARS,
`CONFERENCES, AND WORKSHOPS IN THE FIELD OF RETURN-
`TO-WORK/VOCATIONAL REHABILITATION PROGRAMS, AND SAFETY AND
`ACCIDENT PREVENTION PROGRAMS; DEVELOPMENT AND
`DISSEMINATION OF EDUCATIONAL MATERIALS IN THE FIELDS OF
`NUTRITION, SAFETY, HEALTH AND FITNESS FOR CHILDREN
`Class 042. First use: First Use: 2000/11/00 First Use In Commerce: 2000/11/00
`HEALTH CARE SERVICES IN THE NATURE OF HEALTH MAINTENANCE
`ORGANIZATIONS AND PREFERRED PROVIDER ORGANIZATIONS;
`MEDICAL SERVICES, NAMELY, DEVELOPING EMPLOYEE ASSISTANCE
`PROGRAMS FOR PERSONAL PROBLEM ASSESSMENT, WELLNESS
`PROMOTION, AND REFERRAL SERVICES AND CONSULTING RELATED
`THERETO; MANAGED CHIROPRACTIC CARE SERVICES; PREFERRED
`PROVIDER ORGANIZATION SERVICES, NAMELY PROVIDING PEER
`REVIEW, UTILIZATION REVIEW, AND BENEFICIARY SERVICES
`PROGRAMS TO PHYSICIANS AND HOSPITALS; COMPUTER SERVICES,
`NAMELY, PROVIDING ON-LINE MAGAZINES AND NEWSLETTERS IN THE
`FIELDS OF HEALTH CARE, HEALTH CARE INSURANCE, AND LIFESTYLE,
`AND PROVIDING INFORMATION IN THE FIELDS OF HEALTH CARE AND
`RELATED PRODUCTS, AND HEALTH CARE FOR CONSUMERS, HEALTH
`CARE VENDORS, AND HEALTH CARE COMPANIES VIA A GLOBAL
`COMPUTER NETWORK; FRAUD DETECTION SERVICES, NAMELY REVIEW
`OF HEALTH CARE SERVICES FOR DETECTION OF FRAUD BY HEALTH
`CARE PROVIDERS OR CONSUMERS; HEALTH CARE SERVICES IN THE
`NATURE OF HEALTH CARE MANAGEMENT ORGANIZATION
`
`U.S. Registration
`No.
`Registration Date
`
`3228396
`
`04/10/2007
`
`Word Mark
`Design Mark
`
`HN
`
`Application Date
`
`08/18/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`NONE
`
`

`
`Goods/Services
`
`Class 035. First use: First Use: 2000/11/00 First Use In Commerce: 2000/11/00
`Computerized online retail services featuring health plans and health care
`products and services; health care utilization, review and cost containment
`services; medical cost management for the health benefit plans of others;
`medical billing information retrieval services; litigation management services;
`clerical services, namely, intake of medical patients and administrative medical
`case management; medical referrals; medical practice management; managed
`care services, namely, utilization review and pre-certification services; managed
`care services, namely, medical bill review; providing peer review, utilization
`review, and beneficiary services programs to physicians and hospitals
`Class 036. First use: First Use: 2000/11/00 First Use In Commerce: 2000/11/00
`Health, medical and hospitalization insurance services, namely, insurance
`consultation in the field of employee health programs including acting as a
`liaison between health care providers and insurance companies and others
`responsible for payment of health care services, and arranging and negotiating
`agreed-upon rates for medical services to subscribers' employees; insurance
`underwriting in the field of health care, medical, and hospitalization; organizing
`pre-paid health plans; underwriting of health care indemnity insurance plans;
`administration and organization of pre-paid health care plans to eligible
`medicare beneficiaries; health care insurance claims processing; administration
`and underwriting of employee health care plans and employee benefit plans;
`administration of workers' compensation claims and benefits; health care
`benefits administration; providing information in the field of health insurance via
`a global computer network
`Class 041. First use: First Use: 2000/11/00 First Use In Commerce: 2000/11/00
`Educational services, namely providing classes, seminars, conferences, and
`workshops in the field of return-to-work/vocational rehabilitation programs, and
`safety and accident prevention programs; development and dissemination of
`educational materials in the fields of nutrition, safety, health and fitness for
`children and adults; providing on-line magazines and newsletters in the fields of
`health care, health care insurance, and lifestyle
`Class 044. First use: First Use: 2000/11/00 First Use In Commerce: 2000/11/00
`Health care services in the nature of health maintenance organizations and
`preferred provider organizations; medical services, namely, developing
`employee assistance programs for personal problem assessment, wellness
`promotion, and referral services and consulting related thereto; managed
`chiropractic care services; providing information in the field of health care and
`related products, and in the fields of health care for consumers, health care
`vendors, and health care companies via a global computer network; health care
`services in the nature of a health care management organization; managed
`health care services; medical consultation services; nursing services; providing
`health care to persons injured in the workplace
`Class 045. First use: First Use: 2000/11/00 First Use In Commerce: 2000/11/00
`Fraud detection services, namely, review of health care services for detection of
`fraud by health care providers or consumers; field case management by medical
`professionals, namely, coordination of injury treatment, rehabilitation, and
`medical claim services; providing assistance in accident investigations, namely,
`injury and accident reporting by medical providers
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`HN
`Computerized online retail services featuring health plans and health
`care products and services; health care utilization, review and cost
`containment services; medical cost management for the health benefit
`
`

`
`plans of others; medical billing information retrieval services; litigation
`management services; clerical services, namely, intake of medical
`patients and administrative medical case management; medical
`referrals; medical practice management; managed care services,
`namely, utilization review and pre-certification services; managed
`care services, namely, medical bill review; providing peer review,
`utilization review, and beneficiary services programs to physicians
`and hospitals; Health, medical and hospitalization insurance services,
`namely, insurance consultation in the field of employee health
`programs including acting as a liaison between health care providers
`and insurance companies and others responsible for payment of
`health care services, and arranging and negotiating agreed-upon
`rates for medical services to subscribers' employees; insurance
`underwriting in the field of health care, medical, and hospitalization;
`organizing pre-paid health plans; underwriting of health care
`indemnity insurance plans; administration and organization of pre-
`paid health care plans to eligible medicare beneficiaries; health care
`insurance claims processing; administration and underwriting of
`employee health care plans and employee benefit plans;
`administration of workers' compensation claims and benefits; health
`care benefits administration; providing information in the field of health
`insurance via a global computer network; Educational services,
`namely providing classes, seminars, conferences, and workshops in
`the field of return-to-work/vocational rehabilitation programs, and
`safety and accident prevention programs; development and
`dissemination of educational materials in the fields of nutrition, safety,
`health and fitness for children and adults; providing on-line magazines
`and newsletters in the fields of health care, health care insurance, and
`lifestyle; health care services in the nature of health maintenance
`organizations and preferred provider organizations; medical services,
`namely, developing employee assistance programs for personal
`problem assessment, wellness promotion, and referral services and
`consulting related thereto; managed chiropractic care services;
`providing information in the field of health care and related products,
`and in the fields of health care for consumers, health care vendors,
`and health care companies via a global computer network; health
`care services in the nature of a health care management organization;
`managed health care services; medical consultation services; nursing
`services; providing health care to persons injured in the workplace;
`Fraud detection services, namely, review of health care services for
`detection of fraud by health care providers or consumers; field case
`management by medical professionals, namely, coordination of injury
`treatment, rehabilitation, and medical claim services; providing
`assistance in accident investigations, namely, injury and accident
`reporting by medical providers; Health care services in the nature of
`health maintenance organizations and preferred provider
`organizations; medical services, namely, developing employee
`assistance programs for personal problem assessment, wellness
`promotion, and referral services and consulting related thereto;
`managed chiropractic care services; preferred provider organization
`services, namely providing peer review, utilization review, and
`beneficiary services programs to physicians and hospitals; computer
`services, namely, providing on-line magazines and newsletters in the
`fields of health care, health care insurance, and lifestyle, and
`providing information in the fields of health care and related products,
`and health care for consumers, health care vendors, and health care
`companies via a global computer network; fraud detection services,
`namely review of health care services for detection of fraud by health
`care providers or consumers; health care services in the nature of
`health care management organization.
`
`

`
`Attachments
`
`76121046#TMSN.gif ( 1 page )( bytes )
`78288872#TMSN.gif ( 1 page )( bytes )
`Health Net's Opposition to HN mark.PDF ( 4 pages )(86546 bytes )
`
`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.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/Richard H. Zaitlen/
`Richard H. Zaitlen
`04/11/2013
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application No. 77/513,890 for the mark
`HN in International Classes 036, 041 and 044,
`published in the Official Gazette on February 12, 2013.
`............................................................--X
`
`HEALTH NET, INC.,
`
`Opposition No.:
`
`Opposer,
`
`V.
`
`HARVEY NICHOLES AND COMPANY
`
`LIMITED CORPORATION,
`
`Applicant.
`............................................................ _..X
`
`Commissioner of Patents and Trademarks
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`NOTICE OF OPPOSITION
`
`Opposer, Health Net, Inc. (“Opposer”), a California Corporation with its place of
`
`business at 21650 Oxnard Street, Woodland Hills, California 91367, opposes the registration of
`
`Trademark Application Ser. No. 77/513,890 for the mark HN for goods and services in
`
`international classes 03 6, 041, and 044 for healthcare-related products and services, including
`
`cosmetic surgery services, dental services, health-related products and treatments, and fitness and
`
`exercise facilities. Opposer believes it will be damaged by the registration of the mark and
`
`hereby opposes its registration.
`
`As grounds for opposition, it is alleged that:
`
`60l90867lv2
`
`

`
`1.
`
`Opposer, a corporation, is using, and for over 12 years has used, the name and
`
`mark HN and variations thereon, in commerce throughout the United States, in connection with a
`
`variety of healthcare and healthcare-related goods and services.
`
`2.
`
`Opposer is the owner of common law rights to the trademark HN in connection
`
`with a variety of healthcare and healthcare-related goods and services.
`
`3.
`
`Opposer is also the owner of a number of United States Trademark Registrations
`
`for the HN mark in various formats including, but not limited to, United States Trademark
`
`Registration Nos. 2729806 and 3228396. These registrations are primafacie evidence of
`
`Opposer’s exclusive ownership of and right to use the HN mark in commerce as provided
`
`therein. These Registrations are for a variety of healthcare and healthcare-related goods and
`
`services, including, but not limited to, healthcare medical services, health insurance, wellness
`
`promotion, and health and fitness for children and adults.
`
`4.
`
`Opposer has extensively used and promoted the HN mark in connection with
`
`aforesaid goods and services and with other related goods and services and, as a result,
`
`Opposer’s HN mark has been famous throughout the United States long prior to any recognized
`
`priority date that Applicant can claim for the opposed application. In fact, Opposer’s HN
`
`registrations are “incontestable” in that they have been in continuous use in commerce for a
`
`period of five years after its date of registration, as evidenced by filed affidavits under § 15 of the
`
`Trademark Act of 1946 (“Lanham Act”) (l5 U.S.C § 1065).
`
`5.
`
`Notwithstanding Opposer’s prior rights in and to its HN mark, Applicant seeks to
`
`register the mark HN in connection with healthcare-related products and services, including
`
`cosmetic surgery services, dental services, health-related products and treatments, and fitness and
`
`exercise facilities.
`
`60190867 1 V2
`
`

`
`6.
`
`Opposer will be damaged by the registration of the HN mark by Applicant, as
`
`aforesaid, in that said mark so resembles Opposer’s HN mark, as to be likely, when applied to
`
`the goods and services of Applicant, to cause confusion, mistake, and deception, with consequent
`
`irreparable damage to Opposer’s business and goodwill and otherwise will improperly give the
`
`appearance of exclusive statutory ownership rights in marks incorporating the HN mark to
`
`Applicant in violation of § 2(d) of the Lanham Act, as amended (15 U.S.C. § 1052(d)), and
`
`derogation of the prior and superior rights of Opposer.
`
`7.
`
`Opposer also will be damaged by the registration of the HN mark by Applicant, as
`
`aforesaid, in that said mark will dilute Opposer’s HN mark in violation of § 43(c) of the Lanham
`
`Act (15 U.S.C. § l125(c)).
`
`8.
`
`By reason of the foregoing, Opposer believes it will be irreparably damaged by
`
`the registration of Applicant’s mark.
`
`9.
`
`Registration should, therefore, be refused pursuant to § 2(d) of the Lanham Act
`
`(15 U.S.C. § l052(d)), on the grounds that the application to register HN so resembles Opposer’s
`
`HN mark as to cause confusion, mistake, or deception and under § 43(c) of the Lanham Act (15
`
`U.S.C. § l152(c)), and on grotmds that said application dilutes the tremendous value of
`
`Opposer’s HN mark.
`
`WHEREFORE, Opposer requests that this opposition be sustained and that the
`
`application by Harvey Nicholes And Company Limited Corporation to register the mark HN
`
`(Ser. No. 77/513,890) be refused.
`
`Opposer will submit payment with the online filing of the Notice, pursuant to 37 CPR. §
`
`2.6(a)(7), in an amount totaling three hundred dollars ($300.00) in payment of the requisite fee
`
`601908671‘/2
`
`

`
`for filing this Notice of Opposition against the application. Please charge any additional
`
`amounts to the undersigned Attorney’s Deposit Account No. 03-3975.
`
` tml1y submitted,
`Sh
`011 b W’
`4
`1‘
`ry
`aw 1 man
`5”
`X‘
`“y
`V’
`;
`
`
`P'tt
`
`, LLP
`
`5
`
`f 5
`
`
`
`g
`
`
`‘V’ ‘fa.
`Ey: Richagid
`Pillsbury Winthrop Shaw Pittman, LLP
`725 South Figueroa Street, Suite 2800
`Los Angeles, California 900l7—5406
`(213) 488-7100
`
`Attorney for Opposer
`Health Net, Inc.
`
`Dated: Los Angeles, California
`April 11, 2013
`
`60l90867lv2