Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA658147
`ESTTA Tracking number:
`02/26/2015
`
`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
`
`MedStar Health, Inc.
`03/01/2015
`
`5565 Sterrett Place
`Columbia, MD 21044
`UNITED STATES
`
`Attorney informa-
`tion
`
`CORY M. AMRON
`VORYS, SATER, SEYMOUR AND PEASE LLP
`PO BOX 2255
`COLUMBUS, OH 43216-2255
`UNITED STATES
`iplaw@vorys.com, tmcurcio@vorys.com Phone:202-467-8800
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86060657
`02/26/2015
`
`Publication date
`Opposition Peri-
`od Ends
`
`09/02/2014
`03/01/2015
`
`Star M3, LLC
`4301 N. MacArthur Blvd, Ste. 203
`Irving, TX 75038
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 044. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Hospital services
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Other
`
`Trademark Act section 2(d)
`Application is void for not being filed by the
`trademark owner
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`1327545
`
`03/26/1985
`
`Word Mark
`
`MEDSTAR
`
`Application Date
`
`03/16/1984
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 1979/06/00 First Use In Commerce: 1979/06/00
`Providing an Emergency Care Facility for Critically Ill and Injured Persons
`
`1498006
`
`07/26/1988
`
`MEDSTAR
`
`NONE
`
`Application Date
`
`04/28/1986
`
`Foreign Priority
`Date
`
`NONE
`
`Class 036. First use: First Use: 1985/07/10 First Use In Commerce: 1985/07/10
`INSURANCE BROKERAGE AND INSURANCE ADMINISTRATION SERVICES
`
`2828750
`
`04/06/2004
`
`MEDSTAR
`
`NONE
`
`Application Date
`
`12/21/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Class 042. First use: First Use: 1979/06/00 First Use In Commerce: 1979/06/00
`medical and hospital services
`
`U.S. Registration
`No.
`Registration Date
`
`3009989
`
`11/01/2005
`
`Application Date
`
`08/15/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`
`MEDSTAR SPORTSHEALTH
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 044. First use: First Use: 2003/06/00 First Use In Commerce: 2003/06/00
`Medical and healthcare services offeredto active individuals, athletes and athlet-
`ic teams
`
`U.S. Registration
`No.
`Registration Date
`
`4218022
`
`10/02/2012
`
`Application Date
`
`04/16/2008
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Word Mark
`Design Mark
`
`MEDSTAR PROMPT CARE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 044. First use: First Use: 2012/05/31 First Use In Commerce: 2012/05/31
`Medical services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`3876697
`
`11/16/2010
`
`MEDSTAR
`
`Application Date
`
`04/05/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 044. First use: First Use: 1979/00/00 First Use In Commerce: 1979/00/00
`Healthcare; home health care services; nursing services; medical infusion ser-
`vices; infusion therapy
`
`U.S. Registration
`No.
`Registration Date
`
`3876699
`
`11/16/2010
`
`Word Mark
`
`MEDSTAR
`
`Application Date
`
`04/05/2010
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 039. First use: First Use: 1983/00/00 First Use In Commerce: 1983/00/00
`Transport of persons by air and ground transportation; transportation ser-
`vices,namely, helicopter transport
`
`U.S. Registration
`No.
`Registration Date
`
`3979287
`
`06/14/2011
`
`Word Mark
`Design Mark
`
`MY MEDSTAR CONNECT
`
`Application Date
`
`04/05/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 044. First use: First Use: 2010/12/11 First Use In Commerce: 2010/12/11
`Electronic health record services, namely, maintaining patient medical records
`and files and providing those records topatients via a web site
`
`U.S. Registration
`No.
`Registration Date
`
`4380481
`
`08/06/2013
`
`Word Mark
`
`MEDSTAR
`
`Application Date
`
`04/05/2010
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2005/00/00 First Use In Commerce: 2005/00/00
`Providing medical training in a simulated environment, including through the use
`of software, mannequins, and actors tomodel medical conditions
`Class 042. First use: First Use: 2000/00/00 First Use In Commerce: 2000/00/00
`Medical research; scientific research; computer software design
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4210948
`
`09/18/2012
`
`MEDSTAR
`
`Application Date
`
`04/08/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 044. First use: First Use: 2011/08/24 First Use In Commerce: 2011/08/24
`Electronic health record services, namely, maintaining patient medical records
`and files and providing those records topatients via a website
`
`U.S. Registration
`No.
`Registration Date
`
`4391876
`
`08/27/2013
`
`Application Date
`
`01/16/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`
`MEDSTAR FAMILY CHOICE
`
`Description of
`Mark
`
`NONE
`
`

`
`Goods/Services
`
`Class 044. First use: First Use: 2007/09/10 First Use In Commerce: 2007/09/10
`Healthcare; Hospitals; Medical services; Managed health care services; Man-
`aged care organization services, namely, managed health care services for
`Medicaid programs
`
`U.S. Application/ Registra-
`tion No.
`Registration Date
`Word Mark
`Goods/Services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`MEDSTAR
`hospital and medical services
`
`Attachments
`
`73470690#TMSN.png( bytes )
`76538519#TMSN.png( bytes )
`77449587#TMSN.png( bytes )
`85006371#TMSN.png( bytes )
`85006375#TMSN.png( bytes )
`85006379#TMSN.png( bytes )
`85006382#TMSN.png( bytes )
`85290749#TMSN.png( bytes )
`85824476#TMSN.png( bytes )
`Notice of Opposition- STAR MEDICAL CENTER (86060657).pdf(115197 bytes )
`Ex. A- Notice of Opp- STAR MEDICAL CENTER (86060657).PDF(16696 bytes )
`Ex. B- Notice of Opp- STAR MEDICAL CENTER (86060657).PDF(68639 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
`
`/tmc/
`Tanya Marie Curcio
`02/26/2015
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. ____________
`
`In the matter of Trademark Application No. 86/060,657
`Mark: STAR MEDICAL CENTER
`Filing Date: September 10, 2013
`
`
`
`
`
`Opposer,
`
`Applicant.
`
`
`
`
`MEDSTAR HEALTH, INC.,
`
`
`v.
`
`
`
`
`STAR M3, LLC,
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`MedStar Health, Inc. (“Opposer”) is a Maryland corporation located at 5565 Sterrett Place,
`
`Columbia, Maryland, 21044.
`
`To the best of Opposer’s knowledge, Star M3, LLC (“Applicant”) is Texas limited liability
`
`company with an address of 4301 N. MacArthur Blvd, Ste. 203, Irving, Texas 75038 and owns U.S.
`
`Trademark Application Serial No. 86/060,657 (the “Application”).
`
`Opposer believes that it is and will continue to be damaged should the Application register and
`
`opposes it as set forth below.
`
`FACTUAL BACKGROUND
`
`Opposer operates various hospitals and health-related businesses in Maryland, Virginia,
`
`Opposer has used the mark MEDSTAR in connection with various medical and hospital
`
`1.
`and Washington, DC.
`2.
`services since at least as early as June 1979.
`3.
`Opposer is the owner of prior registrations for the mark MEDSTAR for medical and
`hospital services (“Opposer’s Services”) the earliest of which was registered March 26, 1985,
`Registration Number 1,327,545. The other prior registrations for or incorporating the mark MEDSTAR
`
`owned by Opposer for medical related goods and services include:
`
`
`
`

`
`
`
`Mark
`
`MEDSTAR
`
`MEDSTAR
`
`MEDSTAR
`SPORTSHEALTH
`
`MEDSTAR
`PROMPT CARE
`
`MEDSTAR
`
`MEDSTAR
`
`MY MEDSTAR
`CONNECT
`
`MEDSTAR
`
`MEDSTAR
`
`MEDSTAR FAMILY
`CHOICE
`
`Registration No. Registration Date
`
`1,498,006
`
`July 26, 1988
`
` 2,828,750
`
`
`
` 3,009,989
`
`April 6, 2004
`
`November 1, 2005
`
` 4,218,022
`
`October 2, 2012
`
` 3,876,697
`
`November 16, 2010
`
` 3,876,699
`
`November 16, 2010
`
` 3,979,287
`
`June 14, 2011
`
` 4,380,481
`
`August 6, 2013
`
` 4,210,948
`
`September 18, 2012
`
` 4,391,876
`
`August 27, 2013
`
`
`Collectively, “Opposer’s Marks.”
`4.
`On September 10, 2013 Applicant filed the Application on an intent to basis for the mark
`STAR MEDICAL CENTER (“Mark”) for use with hospital services (“Services”).
`5.
`The Application was published for opposition on September 2, 2014.
`6.
`opposition against the Application, which was granted the same day.
`
`On September 10, 2014, Opposer filed a request for a 90 day extension of time to file an
`
`On December 19, 2014, with Applicant’s consent, Opposer filed a consented request for a
`7.
`60 day extension of time to file an opposition against the Application, which was granted the same day.
`
`8.
`
`9.
`
`The deadline for Opposer to file an opposition against the Application is March 1, 2015.
`
`LIKELIHOOD OF CONFUSION
`
`Opposer re-alleges and incorporates by reference paragraphs 1 through 8.
`
`10.
`
`Opposer’s Marks and Applicant’s Mark prominently feature the term STAR.
`
`

`
`The first two words in Applicant’s Mark are essentially the inverse of Opposer’s
`11.
`MEDSTAR mark.
`
`12.
`
`13.
`
`14.
`
`15.
`
`16.
`
`The word “CENTER” in Applicant’s Mark is generic.
`
`Opposer’s Marks and Applicant’s Mark give the same commercial impression.
`
`Opposer’s Marks and Applicant’s Mark are confusingly similar.
`
`Applicant’s Services are identical to Opposer’s Services.
`
`Applicant’s Services are highly related to Opposer’s Services.
`
`17.
`
`Applicant’s Services and Opposer’s Services are marketed to the same types of consumers
`through the same trade channels.
`
`Through Opposer’s long use of Opposer’s Mark for hospital and medical related services,
`18.
`Opposer’s Mark has a strong reputation for rendering high quality medical services.
`
`19.
`
`Opposer has used Opposer’s MEDSTAR mark in connection with Opposer’s Services for
`over 30 years before the filing date of the Application, September 10, 2013.
`
`20.
`
`Opposer filed its first federal application for Opposer’s MEDSTAR mark about 29 years
`before the filing date of the Application, September 10, 2013.
`
`Allowing the Application to register would damage Opposer by interfering with Opposer’s
`21.
`exclusive right to use Opposer’s Marks in connection with Opposer’s Services.
`
`Because of the similarity between Opposer’s Marks and Applicant’s Mark, and the
`22.
`relatedness of Opposer’s Services and Applicant’s Services, Applicant’s Mark is likely to cause
`confusion, cause mistake or deceive the public, and cause the public to believe, incorrectly, that
`Applicant’s Services emanate from, are authorized or endorsed by, or are otherwise connected with
`Opposer in violation of Section 2(d) of the Lanham Act, 15 U.S.C. §1052(d).
`
`COUNT II: THE APPLICATION WAS NOT FILED BY THE MARK OWNER
`
`23.
`
`24.
`
`Opposer re-alleges and incorporates by reference paragraphs 1 through 8.
`
`On June 20, 2014, M3 Care, LLC filed a use based application for the identical mark as
`
`shown in the Application, STAR MEDICAL CENTER, for the identical services, hospital services,
`shown in the Application, Application Number 86/316,000 (“M3 Care Application”). See Exhibit A for
`TSDR record.
`
`

`
`25. M3 Care Application states that M3 Care, LLC has an address identical to Applicant’s
`address, 4301 N. MacArthur Blvd, Ste. 203, Irving, Texas 75038.
`
`26. With the M3 Care Application M3 Care, LLC submitted a specimen of use of the mark
`STAR MEDICAL CENTER consisting of a website for its medical facility located at 4100 Mapleshade
`
`Lane, Planco, Texas 75075 and bearing the STAR MEDICAL CENTER mark. See Exhibit B for
`
`specimen of record for the M3 Care Application.
`
`27.
`Upon information and belief, M3 Care, LLC is the proprietor of the medical facility
`located at 4100 Mapleshade Lane, Planco, Texas 75075 bearing the Applicant’s Mark.
`
`Upon information and belief, M3 Care, LLC uses Applicant’s Mark STAR MEDICAL
`28.
`CENTER in commerce in connection with hospital services.
`
`Upon information and belief, M3 Care, LLC uses Applicant’s Mark STAR MEDICAL
`29.
`CENTER in commerce in connection with the medical facility located at 4100 Mapleshade Lane, Planco,
`
`Texas 75075.
`
`30.
`
`Upon information and belief, M3 Care, LLC is the owner of Applicant’s Mark STAR
`MEDICAL CENTER.
`
`31.
`Upon information and belief, Applicant is not the proprietor of the medical facility located
`at 4100 Mapleshade Lane, Planco, Texas 75075 bearing the Applicant’s Mark.
`
`32.
`Upon information and belief, when the Application was filed, Applicant did not own
`Applicant’s Mark.
`
`33.
`
`The Application should be denied registration due to being filed in the name of the
`
`Applicant rather than the true owner of the mark M3 Care, LLC.
`
`*
`
`*
`
`*
`
`
`
`THEREFORE, Opposer prays that the Trademark Trial and Appeal Board sustain this Notice of
`
`Opposition to Application Serial No. 86,060,657 for STAR MEDICAL CENTER.
`
`
`
`The required fee accompanies this Notice. Please charge any additional fees to Deposit Account
`
`No. 50-6424.
`
`

`
`Please recognize Cory M. Amron, William H. Oldach III, Laura Geyer and Tanya Marie Curcio,
`
`all members of the bar of the District of Columbia, and all of the firm of Vorys, Sater, Seymour and
`
`Pease, LLP, as Opposer’s attorneys to prosecute this Notice of Opposition.
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Cory M. Amron
`William H. Oldach III
`Tanya M. Curcio
`Laura T. Geyer
`VORYS, SATER, SEYMOUR & PEASE LLP
`1909 K Street, NW
`Ninth Floor
`Washington, DC 20006
`Telephone: 202.467.8800
`E-Mail: iplaw@vorys.com
`
`Attorney for Opposer
`MEDSTAR HEALTH, INC.
`
`
`
`
`
`Date: February 26, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`CERTIFICATE OF SERVICE
`
`
`
`I certify that a true and correct copy of the foregoing Notice of Opposition was served on February
`26, 2015, by first-class United States Mail, postage prepaid, on:
`
`
`President
`4301 N. MacArthur Blvd
`Ste. 203
`Irving, Texas 75038
`
`
`
`With a courtesy copy to:
`
`
`Mr. Christian Frederiksen
`Hallett & Perrin, P.C.
`4301 N MacArthur Blvd, Ste. 203
`Irving, TX 75038
`
`
`
`John W. McGlynn
`RatnerPrestia
`1235 Westlakes Drive, Suite 301
`PO Box 980
`Berwyn, PA 19312
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Tanya Marie Curcio
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`21201179
`
`

`
`Generated on: This page was generated by TSDR on 2015-02-26 12:25:28 EST
`
`Mark: STAR MEDICAL CENTER
`
`US Serial Number: 86316000
`
`Register: Principal
`
`Mark Type: Service Mark
`
`Application Filing Date: Jun. 20, 2014
`
`Status: A non-final Office action has been sent (issued) to the applicant. This is a letter from the examining attorney requiring additional
`information and/or making an initial refusal. The applicant must respond to this Office action. To view all documents in this file, click on
`the Trademark Document Retrieval link at the top of this page.
`
`Status Date: Oct. 16, 2014
`
`
`
`Mark Information
`
`Mark Literal Elements: STAR MEDICAL CENTER
`
`Standard Character Claim: Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`Mark Drawing Type: 4 - STANDARD CHARACTER MARK
`Goods and Services
`
`Note: The following symbols indicate that the registrant/owner has amended the goods/services:
`
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Hospital Services
`
`International Class(es): 044 - Primary Class
`
`U.S Class(es): 100, 101
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Oct. 15, 2013
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Use in Commerce: Oct. 15, 2013
`Basis Information (Case Level)
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Amended Use: No
`
`Amended ITU: No
`
`Amended 44D: No
`
`Amended 44E: No
`
`Currently No Basis: No
`Current Owner(s) Information
`
`Owner Name: M3 Care, LLC
`
`Owner Address: 4301 N.MacArthur Blvd. Ste 203
`Irving, TEXAS 75038
`UNITED STATES
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country Where
`Organized:
`Attorney/Correspondence Information
`
`TEXAS
`
`Correspondent
`Name/Address:
`
`M3 CARE, LLC
`M3 CARE, LLC
`4301 N MACARTHUR BLVD STE 203
`IRVING, TEXAS 75038-6497
`UNITED STATES
`
`Phone: 618-541-2864
`
`Correspondent e-mail: IPServicesPC@yahoo.com
`
`Attorney of Record - None
`Correspondent
`
`Correspondent e-mail
`Authorized:
`
`Yes
`
`

`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Oct. 16, 2014
`Oct. 16, 2014
`Oct. 16, 2014
`Sep. 28, 2014
`Jun. 28, 2014
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`NON-FINAL ACTION E-MAILED
`NON-FINAL ACTION WRITTEN
`ASSIGNED TO EXAMINER
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`TM Staff and Location Information
`
`TM Attorney: CORWIN, CHARLOTTE K
`
`Current Location: TMO LAW OFFICE 119 - EXAMINING
`ATTORNEY ASSIGNED
`
`TM Staff Information
`Law Office Assigned: LAW OFFICE 119
`
`File Location
`
`Date in Location: Oct. 16, 2014
`
`Proceeding
`Number
`6325
`6325
`82415
`82415
`
`

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`HOME
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`Phane; 913.235.1959 I in‘fc@starrnedce_nter.eom
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`17611’
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`MEDICAL CENTER
`
`SIAR CONIMII INFO
`
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`41 D0 Maple.-shade Ln.
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