Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA643059
`ESTTA Tracking number:
`12/08/2014
`
`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 ex-
`tension
`Address
`
`Mainstreet Capital Partners, LLC
`12/10/2014
`
`14390 Clay Terrace Blvd Suite 205
`Carmel, IN 46032
`UNITED STATES
`
`Attorney informa-
`tion
`
`Bradley M. Stohry
`Reichel IP LLP
`212 West 10th Street Suite D-280
`Indianapolis, IN 46202
`UNITED STATES
`brad@reichelip.com Phone:3174238820
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86212449
`12/08/2014
`
`Publication date
`Opposition Peri-
`od Ends
`
`08/12/2014
`12/10/2014
`
`GOREN, MICHAEL S
`29265 Kestrel Ln
`Laguna Niguel, CA 92677
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 044. First Use: 2014/01/00 First Use In Commerce: 2014/01/00
`All goods and services in the class are opposed, namely: Addiction treatment services; Healthcare;
`Rehabilitation for substance abuse patients; Rehabilitation patient care services
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`4416204
`
`10/08/2013
`
`Word Mark
`
`HEALTHCARE RESORT
`
`Application Date
`
`10/25/2012
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA643059
`ESTTA Tracking number:
`12/08/2014
`
`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 ex-
`tension
`Address
`
`Mainstreet Capital Partners, LLC
`12/10/2014
`
`14390 Clay Terrace Blvd Suite 205
`Carmel, IN 46032
`UNITED STATES
`
`Attorney informa-
`tion
`
`Bradley M. Stohry
`Reichel IP LLP
`212 West 10th Street Suite D-280
`Indianapolis, IN 46202
`UNITED STATES
`brad@reichelip.com Phone:3174238820
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86212449
`12/08/2014
`
`Publication date
`Opposition Peri-
`od Ends
`
`08/12/2014
`12/10/2014
`
`GOREN, MICHAEL S
`29265 Kestrel Ln
`Laguna Niguel, CA 92677
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 044. First Use: 2014/01/00 First Use In Commerce: 2014/01/00
`All goods and services in the class are opposed, namely: Addiction treatment services; Healthcare;
`Rehabilitation for substance abuse patients; Rehabilitation patient care services
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`4416204
`
`10/08/2013
`
`Word Mark
`
`HEALTHCARE RESORT
`
`Application Date
`
`10/25/2012
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 2013/08/22 First Use In Commerce: 2013/08/22
`Capital investment services in the field of real estate, namely, capital investment
`in senior care campuses consisting of a combination of skilled nursing, assisted
`living, Alzheimer's/memory care and seniors apartments; Financial investments
`in the field of real estate for others, namely, investments in senior care cam-
`puses consisting of a combination of skilled nursing, assisted living,
`Alzheimer's/memory care and senior apartments
`Class 037. First use: First Use: 2013/08/22 First Use In Commerce: 2013/08/22
`Housing services, namely, repair, renovation, and new construction of senior
`care campuses consisting of a combination of skilled nursing, assisted living,
`Alzheimer's/memory care and seniors apartments
`
`U.S. Registration
`No.
`Registration Date
`
`4420055
`
`10/15/2013
`
`Word Mark
`Design Mark
`
`HEALTH CARE RESORT
`
`Application Date
`
`10/26/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 2013/08/22 First Use In Commerce: 2013/08/22
`Capital investment services in the field of real estate, namely, capital investment
`in senior care campuses consisting of a combination of skilled nursing, assisted
`living, Alzheimer's/memory care and seniors apartments; Financial investments
`in the field of real estate for others, namely, investments in senior care cam-
`puses consisting of a combination of skilled nursing, assisted living,
`Alzheimer's/memory care and senior apartments
`Class 037. First use: First Use: 2013/08/22 First Use In Commerce: 2013/08/22
`Housing services, namely, repair, renovation, and new construction of senior
`care campuses consisting of a combination of skilled nursing, assisted living,
`Alzheimer's/memory care and seniors apartments
`
`
`
`Attachments
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`85763757#TMSN.png( bytes )
`85764270#TMSN.png( bytes )
`Mainstreet - Notice of Opposition re RESORT HEALTHCARE.pdf(189602 bytes
`)
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`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
`
`/bms/
`Bradley M. Stohry
`12/08/2014
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark App. Ser. Nos. 86/212,449
`Filed on March 5, 2014
`For the mark RESORT HEALTHCARE (and Design)
`Published in the Official Gazette on August 12, 2014
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`Mainstreet Capital Partners, LLC,
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`Opposer,
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`Michael S. Goren,
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`Applicant.
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`Opposition No.:______________
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`NOTICE OF OPPOSITION
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`
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`Mainstreet Capital Partners, LLC (“Opposer”) hereby opposes the above-referenced
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`application to register the RESORT HEALTHCARE (and Design) mark filed by Michael S.
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`Goren (“Applicant”). The grounds for opposition are as follows:
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`THE PARTIES
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`1.
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`Opposer is an Indiana limited liability company with a place of business at 14390
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`Clay Terrace Boulevard, Suite 205, Carmel, IN 46032.
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`2.
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`Applicant is a California resident with an address at 29265 Kestrel Lane, Laguna
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`Niguel, CA 92677.
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`OPPOSER AND ITS USE OF THE HEALTHCARE RESORT MARKS
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`3.
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`Opposer is in the business of developing, financing and jointly operating best-in-
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`class transitional care centers and long-term health care properties.
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`4.
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`Opposer is the owner of substantial trademark rights in the HEALTHCARE
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`RESORT and HEALTH CARE RESORT marks (collectively, the “HEALTHCARE RESORT
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`Marks”).
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`5.
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`Opposer owns U.S. Trademark Registration Numbers 4,416,204 and 4,420,055,
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`for the HEALTHCARE RESORT Marks (collectively, the “HEALTHCARE RESORT
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`Registrations”). The HEALTHCARE RESORT Registrations cover “capital investment services
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`in the field of real estate, namely, capital investment in senior care campuses consisting of a
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`combination of skilled nursing, assisted living, Alzheimer's/memory care and seniors apartments;
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`financial investments in the field of real estate for others, namely, investments in senior care
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`campuses consisting of a combination of skilled nursing, assisted living, Alzheimer's/memory
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`care and senior apartments” in Class 36; and “housing services, namely, repair, renovation, and
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`new construction of senior care campuses consisting of a combination of skilled nursing, assisted
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`living, Alzheimer's/memory care and seniors apartments” in Class 37.
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`6.
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`Applicant filed its trademark applications for the HEALTHCARE RESORT
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`Marks on October 25, 2012 and October 26, 2012, respectively.
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`7.
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`Opposer has been using the HEALTHCARE RESORT Marks to promote its
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`healthcare services and facilities since August 22, 2013.
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`8.
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`Since Opposer began using the HEALTHCARE RESORT Marks, it has
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`established valuable goodwill in the HEALTHCARE RESORT Marks.
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`9.
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`As a result of Opposer’s use of the HEALTHCARE RESORT Marks, the
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`HEALTHCARE RESORT Marks have become valuable property of Opposer.
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`APPLICANT’S TRADEMARK APPLICATION
`AND USE OF THE RESORT HEALTHCARE (AND DESIGN) MARK
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`Applicant filed his trademark application (the “Application”) for the RESORT
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`10.
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`HEALTHCARE (and Design) on March 5, 2014.
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`11.
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`The Application was published for opposition on August 12, 2014. Because
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`Applicant filed a Request for Extension of Time to Oppose, which was granted by the Trademark
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`Page 2
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`Trial and Appeal Board, Opposer’s deadline to initiate an opposition was extended until
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`December 10, 2014.
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`12.
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`The Application is a use-based application and covers “Addiction treatment
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`services; Healthcare; Rehabilitation for substance abuse patients; Rehabilitation patient care
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`services” in Class 44.
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`13.
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`Applicant indicates that he began using the RESORT HEALTHCARE (and
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`Design) mark in connection with his services in January 2014.
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`GROUNDS FOR REJECTING THE APPLICATION
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`14.
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`Opposer’s actual, continuous, and continuing use of the HEALTHCARE
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`RESORT Marks in commerce began before Applicant filed his Application and/or began using
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`the RESORT HEALTHCARE (and Design) mark.
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`15.
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`16.
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`Both of the HEALTHCARE RESORT Registrations predate the Application.
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`Applicant’s use and registration of the RESORT HEALTHCARE (and Design)
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`mark for the services listed in the Application is likely to cause confusion, mistake, and/or lead
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`to deception as to the origin of Applicant’s services in violation of Sections 32 and 43(a) of the
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`Lanham Act, 15 U.S.C. §§1114 and 1125(a).
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`17.
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`The likelihood of confusion is apparent in this instance because the RESORT
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`HEALTHCARE (and Design) merely reverses the terms in the HEALTHCARE RESORT
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`Marks, the RESORT HEALTHCARE (and Design) mark is confusingly similar to the
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`HEALTHCARE RESORT Marks, and both Applicant and Opposer use their respective marks in
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`connection with services related to healthcare and rehabilitation.
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`18.
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`Applicant’s use and registration of the RESORT HEALTHCARE (and Design)
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`mark is likely to result in confusion and substantial damage and injury to Opposer. Persons
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`Page 3
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`familiar with Opposer’s HEALTHCARE RESORT Marks are likely to believe that Applicant’s
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`services originate with, or are licensed, sponsored or approved by Opposer. Any such confusion
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`would inevitably result in loss of sales to Opposer, and/or damage the goodwill and reputation
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`that Opposer has established in the HEALTHCARE RESORT Marks.
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`WHEREFORE, Opposer prays that the Application be rejected.
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`Dated this 8th day of December, 2014.
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`Respectfully submitted,
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`
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`
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`
`
`/Bradley M. Stohry/
`Bradley M. Stohry
`REICHEL IP LLP
`212 West 10th Street
`Suite D-280
`Indianapolis, Indiana 46202
`(317) 423-8820
`
`Attorney for Mainstreet Capital Partners,
`LLC
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`By:
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`Page 4
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing was served upon the following by
`first-class United States mail, postage prepaid, on December 8, 2014:
`
`
`Xavier Morales
`Law Office of Xavier Morales
`P.O. Box 690488
`San Antonio, TX 78269-0488
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`By:
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`/Bradley M. Stohry/
`Bradley M. Stohry
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`Page 5
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