Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1294250
`
`Filing date:
`
`06/28/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91284195
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Blue Cross Blue Shield Association
`
`MONIQUE HOWERY
`RILEY SAFER HOLMES & CANCILA
`70 W MADISON STREET
`SUITE 2900
`CHICAGO, IL 60602
`UNITED STATES
`Primary email: mhowery@rshc-law.com
`Secondary email(s): kpope@rshc-law.com
`312-471-8742
`
`Motion to Suspend for Civil Action
`
`Monique Howery
`
`mhowery@rshc-law.com, kpope@rshc-law.com, ematias@rshc-law.com,
`gmueller@rshc-law.com
`
`/Monique Howery/
`
`06/28/2023
`
`2023.06.28 BCBSA Corrected Motion for Suspension.pdf(187985 bytes )
`Ex A - Complaint.pdf(1627638 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Opposer,
`
`BLUE CROSS AND BLUE SHIELD
`ASSOCIATION,
`
`
`
`v.
`
`WOUND SYNC, LLC,
`
`
`
`
`Applicant.
`
`
`
`
`
`
`Opposition No.: 91,284,195
`
`
`Serial No. 97/186,345
`
`
`
`
`
`OPPOSER’S CORRECTED MOTION TO SUSPEND PROCEEDING PENDING
`FEDERAL RULING
`
`Opposer, Blue Cross and Blue Shield Association (“Association”), hereby submits this
`
`Motion to Suspend the above–styled opposition proceeding before the Trademark Trial and Appeal
`
`Board against Wound Sync, LLC (“Applicant”) pursuant to 37 C.F.R. § 2.117(a). In support, the
`
`Association states as follows:
`
`1.
`
`On June 26, 2023, the Association initiated a lawsuit against the Applicant alleging
`
`trademark infringement, unfair competition, and trademark dilution in the United States District
`
`Court for the Western District of Texas, San Antonio Division captioned Blue Cross and Blue
`
`Shield Association v. Wound Sync, LLC, No. 5:23-cv-00800 (W.D. Tex. Jun 26, 2023) (the “District
`
`Court Action”). In its complaint, the Association alleged that Applicant’s use of its
`
`WOUNDSYNC (& Design) trademark as shown in Application Serial No. 97/186,345 (the
`
`“Subject Mark”) and its standalone use of the blue cross design in connection with its services is
`
`likely to confuse consumers and dilute the Association’s family of Blue Cross trademarks. A copy
`
`of the Association’s complaint is attached as Exhibit A.
`
`
`
`
`
`
`
`1
`
`

`

`2.
`
`The Association is requesting suspension of these proceedings pending resolution
`
`of the District Court Action. Under Rule 21.117(a), the Board’s well–established policy is to
`
`suspend proceedings when there is ongoing civil litigation between the same parties involving
`
`related issues that may have a bearing on the Board case. See New Orleans Louisiana Saints LLC
`
`and NFL Properties LLC v. Who Dat?, Inc., 99 USPQ 2d 1550, 1552 (TTAB 2011). The Board
`
`has repeatedly held that matters concerning trademark infringement are relevant to opposition
`
`proceedings and justify suspending the proceedings. Id.
`
`3.
`
`Suspending this proceeding is appropriate considering that the parties involved in
`
`this opposition are identical to those in the District Court Action, the relief sought in the District
`
`Court Action is broader than what is available in TTAB, and the civil litigation would resolve the
`
`same issue as this proceeding—whether the Subject Mark is likely to cause confusion with the
`
`Association’s family of Blue Cross Marks. See Who Dat, 99 USPQ 2d at 1552 (citing McCarthy
`
`on Trademarks and unfair Competition § 32:47 (4th ed. Updated June 2011) (“It is standard
`
`procedure for the Trademark Board to stay administrative proceedings pending the outcome of
`
`court litigation between the same parties involving related issues.”)). Moreover, other than
`
`Applicant’s responsive pleading and the parties’ discovery conference on June 6, 2023, very little
`
`has occurred in this proceeding (no discovery has been propounded and initial disclosures are not
`
`due until July 7, 2023). Therefore, the Association respectfully requests that the Board grant this
`
`motion to suspend these proceedings.
`
`4.
`
`On June 26, 2023, the Association sought Applicant’s consent to suspend these
`
`proceedings. The Applicant did not respond to the Association’s request.
`
`WHEREFORE, for the reasons stated above, the Association respectfully requests that this
`
`tribunal suspend these proceedings pending resolution of the District Court Action.
`
`
`
`2
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`By: __/s/ Monique B. Howery
`
`Monique B. Howery, Esq.
`
`Keyonn L. Pope, Esq.
`
`RILEY SAFER HOLMES & CANCILA LLP
`
`70 W. Madison Street, Suite 2900
`
`Chicago, IL 60601
`mhowery@rshc-law.com
`kpope@rshc-law.com
`
`Attorneys for Opposer
`Blue Cross and Blue Shield Association
`
`
`
`
`
`
`3
`
`

`

`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that, on the 28th day of June 2023, a true and correct copy of the
`
`foregoing OPPOSER’S MOTION TO SUSPEND PROCEEDING PENDING FEDERAL
`
`RULING was sent Applicant’s attorney via electronic mail to:
`
`Wes Holland
`wes@hollandzimmerman.com
`James M. Stewart
`jack@hollandzimmerman.com
`HOLLAND & ZIMMERMAN, PLLC
`12 Truss Drive, Suite 105
`Boerne, TX 78006
`
`
`/s/ Monique B. Howery
`Monique B. Howery, Esq.
`Keyonn L. Pope, Esq.
`Riley Safer Holmes & Cancila LLP
`70 W. Madison Street, Suite 2900
`Chicago, IL 60601
`mhowery@rshc-law.com
`kpope@rshc-law.com
`
`
`
`
`
`
`
`
`
`
`
`
`4875-2668-6572, v. 7
`
`
`
`

`

`Exhibit A
`to Opposer’s Motion to Suspend
`Opposition No.: 91,284,195
`
`

`

`
`
`
`
`
`UNITED STATES DISTRICT COURT FOR THE
`WESTERN DISTRICT OF TEXAS
`SAN ANTONIO DIVISION
`
`BLUE CROSS AND BLUE SHIELD
`ASSOCIATION,
`
`
`
`
`
`
`
`
`Plaintiff,
`
`
`
`Case No.:
`
`COMPLAINT FOR
`TRADEMARK INFRINGEMENT,
`UNFAIR COMPETITION, AND
`TRADEMARK DILUTION
`
`JURY DEMANDED
`
`v.
`
`
`WOUND SYNC, LLC,
`
`
`
`
`
`
`
`
`
`
`Defendant.
`
`Plaintiff Blue Cross and Blue Shield Association (“BCBSA”), by and through its counsel,
`
`brings this Complaint against Defendant Wound Sync, LLC (“Wound Sync”), for trademark
`
`infringement, unfair competition, and trademark dilution under federal and Texas state law.
`
`BCBSA alleges as follows:
`
`PARTIES
`
`1.
`
`Plaintiff Blue Cross and Blue Shield Association is a nonprofit corporation
`
`organized under the laws of the State of Illinois, with its principal place of business at 225 North
`
`Michigan Avenue, Chicago, Illinois 60601.
`
`2.
`
`On information and belief, Defendant Wound Sync, LLC, is a limited liability
`
`company organized under the laws of Delaware with its principal place of business at 116 West
`
`Blanco Road, Suite 201, Boerne, Texas 78006.
`
`JURISDICTION AND VENUE
`
`3.
`
`This action arises under the Lanham Act, 15 U.S.C. § 1051, et seq., and the laws of
`
`the State of Texas. This Court has subject matter jurisdiction over this action pursuant to 15 U.S.C.
`
`
`
`

`

`
`
`§ 1121 and 28 U.S.C. §§ 1331, 1338(a)–(b). Further, this Court has supplemental jurisdiction over
`
`BCBSA’s state–law claims pursuant to 28 U.S.C. § 1367(a) because those claims are substantially
`
`related to BCBSA’s federal claims.
`
`4.
`
`This Court has personal jurisdiction over Wound Sync because, on information and
`
`belief, Wound Sync maintains its principal place of business in Texas. Further, on information
`
`and belief, Wound Sync conducts business in Texas, such as advertising and selling its services to
`
`Texas residents.
`
`5.
`
`Venue is proper in this Court pursuant to 28 U.S.C. § 1391(b) because Wound Sync
`
`resides in this District, as it is subject to personal jurisdiction in this District. Additionally, venue
`
`is proper because a substantial part of the events giving rise to these claims occurred in this District.
`
`Wound Sync conducts business throughout Texas, such as by advertising and selling its services
`
`to consumers in this District and has committed the infringement as alleged below in this District,
`
`such that the acts or omissions complained of took place—in whole or in part—within Kendall
`
`County, Texas.
`
`FACTUAL ALLEGATIONS
`
`I.
`
`BCBSA Maintains Famous Trademarks and Source Identifiers.
`
`6.
`
`BCBSA is a national association of 34 independent, community–based and locally
`
`operated BLUE CROSS® and BLUE SHIELD® companies (“Member Plans”), including Blue
`
`Cross and Blue Shield of Texas (“BCBSTX”) in this District. With its roots starting in 1929,
`
`BCBSA represents the nation’s oldest and largest family of health benefits companies.
`
`7.
`
`For nearly a century, BCBSA (including through its predecessors–in–interest, its
`
`Member Plans, and licensees) has provided tens of millions of American families with top–quality
`
`affordable health care plans. Indeed, BCBSA’s Member Plans cover 1 in 3 Americans, collectively
`
`providing health care coverage for 115 million members across the United States and Puerto Rico.
`
`2
`
`

`

`
`
`BCBSA’s Member Plans also provide health care plans to more than 70% of Fortune 500
`
`companies and more than 81% of Fortune 100 companies. Nationwide, BCBSA’s Member Plans
`
`contract with more than 1.7 million health care providers—more than any other insurer. In fact,
`
`on information and belief, Wound Sync’s cofounder, Dr. Han P. Pham–Hulen, is an in–network
`
`provider for BCBSTX, the Blue Cross and Blue Shield licensee in Texas.1
`
`8.
`
`BCBSA’s BLUE CROSS and BLUE SHIELD brands are among the most famous
`
`and renowned in healthcare and healthcare–related industries, both domestically and globally.
`
`BCBSA owns the BLUE CROSS word and design marks, the BLUE SHIELD word and design
`
`marks, as well as other marks consisting of the image of a blue cross, a blue shield, or both.
`
`BCBSA (including through its predecessors–in–interest, its Member Plans, and licensees) has used
`
`these trademarks and service marks since at least the 1930s.
`
`9.
`
`BCBSA also licenses the use of these various marks to its Member Plans and other
`
`licensees for the provision of a wide variety of goods and services, including but not limited to,
`
`insurance, healthcare delivery services, healthcare data and analytics, financial services, wellness
`
`services, health education, and other related goods and services.
`
`10.
`
`In the United States alone, BCBSA owns over 270 valid and subsisting federal
`
`trademark and service mark registrations. Many of its U.S. registrations have become
`
`incontestable under Section 15 of the Lanham Act. Additionally, BCBSA owns similar trademark
`
`and service mark registrations in more than 180 countries throughout the world. All of these (along
`
`with numerous trade names and common law marks) form a family of BLUE trade names,
`
`trademarks, and service marks (“Blue Marks”).
`
`
`1 See, e.g., https://www.medifind.com/doctors/han-p-pham-hulen/12544811 (last visited June 15,
`2023) (stating the cofounder accepts Blue Cross Blue Shield insurance)
`
`3
`
`

`

`
`
`11.
`
`A subset of the Blue Marks is a wide range of marks consisting entirely or
`
`substantially of either the words BLUE CROSS, an image of a blue cross, or both (“Blue Cross
`
`Marks”). Examples of BCBSA’s federal trademark registrations for its Blue Marks, including the
`
`Blue Cross Marks, are listed in Exhibit A.
`
`12.
`
`Historically and through the present, these Blue Cross Marks span a variety of
`
`differently configured crosses. BCBSA (including through its predecessors–in–interest, its
`
`Member Plans, and licensees) has used and does use the Blue Cross Marks in a wide range of blue
`
`colors, from light to dark and through a variety of hues and tones. Examples of the Blue Cross
`
`Marks include:
`
`
`
`
`
`
`
`13.
`
`At common law, BCBSA has used the Blue Cross Marks in connection with a broad
`
`range of healthcare, insurance, medical and related services, including without limitation: health
`
`insurance and plan services; health care management and consulting services; health care and
`
`medical services; health care delivery through medical clinics, physicians, wellness screening
`
`services, and wellness programs, including in wound care; assessing healthcare service provider
`
`performance; and providing services for locating and connecting with healthcare providers and
`
`physicians.
`
`14.
`
`For instance, one BCBSA Member Plan partnered with another company to deliver
`
`enhanced wound and ostomy care to homebound patients, known as the Wound Care Connect
`
`4
`
`

`

`
`
`Program.2 Another BCBSA Member Plan established health centers to provide the community
`
`access to personalized support from nurses and specialists, fitness classes and wellness programs,
`
`assistance in navigating their health plans, among other services.3
`
`15.
`
`As another example, one BCBSA Member Plan offers Blue Cross® Coordinated
`
`Care, which is a personalized health care management program that connects patients with a care
`
`team composed of nurses, doctors, social workers, pharmacists and behavior health specialists that
`
`coordinate with local providers and community resources.4 The same BCBSA Member Plan offers
`
`Blue Cross Online VisitsSM, which allows patients to have virtual visits with a healthcare provider.5
`
`16.
`
`For decades, BCBSA (including through its Member Plans and licensees) has
`
`extensively used, advertised, and promoted the Blue Marks, including the Blue Cross Marks,
`
`throughout the United States. For instance, in past years, annual net revenue under the Blue Marks,
`
`including the Blue Cross Marks, has exceeded $300 billion domestically. BCBSA (including
`
`through its Member Plans and licensees) has created substantial goodwill in the marketplace by
`
`spending millions of dollars in advertising and promoting its marks, services, products, and image
`
`bearing the Blue Marks, including the Blue Cross Marks, such as online through BCBSA’s website
`
`and social media accounts.
`
`17.
`
`For example, BCBSA Member Plan, Blue Cross and Blue Shield of Texas
`
`(“BCBSTX”) has partnered with the National Fitness Campaign and other entities to deliver
`
`outdoor fitness venues, Fitness Courts®, to residents throughout Texas to build healthy
`
`
`2 See https://providernews.anthem.com/ohio/articles/wound-care-connect-program-for-medicare-
`advantage-and-group-retiree-members (last accessed June 23, 2023).
`3 See https://www.floridablue.com/center (last accessed June 23, 2023).
`4 See https://www.bcbsm.com/providers/help/coordinated-care/ (last accessed June 23, 2023).
`5 See https://www.bcbsm.com/find-care/online-visits/ (last accessed June 23, 2023).
`
`5
`
`

`

`
`
`communities.6 So far, BCBSTX has helped deliver Fitness Courts® to 28 Texas counties for the
`
`public to enjoy, which are accessible to tens of thousands of individuals. Since BCBSTX is a
`
`partner, the Blue Marks, including the Blue Cross Marks, are often included on the Fitness
`
`Courts®. Similarly, BCBSTX has served the Texas community by sponsoring The Caring
`
`Foundation of Texas and its The Care Van program, which provides access to preventive health
`
`services to children throughout the state. Since the program began in 1997, The Care Van program
`
`has served over 1.3 million Texas children, including through its fleet of custom vans, which bear
`
`some of BCBSA’s Blue Marks, including the Blue Cross Marks.
`
`18.
`
`As another example, a BCBSA Member Plan is a founding partner of NASCAR’s
`
`first ever Chicago Street Race Weekend.7 Therefore, BCBSA’s branding will be used throughout
`
`the course, such as in a dedicated founding partner section, fan entrances, concert stages,
`
`wayfinding, and at the historic start–finish line. It is anticipated that approximately 100,000
`
`viewers will attend the NASCAR event in person, and millions of viewers will watch at home.
`
`19.
`
`BCBSA has established rights in the Blue Marks, including the Blue Cross Marks,
`
`through its long term, continuous, and exclusive use of the marks in commerce in the United States.
`
`20.
`
`As a result of BCBSA’s efforts, the general public recognizes the Blue Marks,
`
`including the Blue Cross Marks, separately and collectively as identifying BCBSA, its Member
`
`Plans, and licensees—and the quality services they render. The Blue Marks are an asset of
`
`incalculable value to the BCBSA. In fact, third parties have touted the fame and strength of
`
`BCBSA’s Blue Marks, including the Blue Cross Marks, in multiple unsolicited media references.
`
`
`6 See https://www.nationalfitnesscampaign.com/texas (last accessed June 23, 2023)
`7 See, e.g., https://www.nascar.com/news-media/2023/03/28/nascar-tabs-blue-cross-and-blue-
`shield-of-illinois-as-founding-partner-of-chicago-street-race-weekend/ (last accessed June 23,
`2023).
`
`6
`
`

`

`
`
`For instance, a commentator warned companies in the healthcare industry to avoid using a blue
`
`cross as a trademark or logo since there was a “large barrier in this arena: the famous marks owned
`
`and registered” by BCBSA.8
`
`21.
`
`Further, U.S. federal district courts and other legal panels such as the World
`
`Intellectual Property Organization have expressly recognized the fame of the Blue Marks,
`
`including the Blue Cross Marks. For example, the court in Blue Cross & Blue Shield Ass’n v. Blue
`
`Cross Mut. Clinic, Inc. held that the “BLUE CROSS word mark and BLUE CROSS design marks
`
`are famous and strong marks, whether used in association with one another or independently” for
`
`health care services and prepaid financing and administration of medical, hospital, and similar
`
`health care services. 612 F. Supp. 41, 44 (S.D. Fla. Feb. 28, 1985). As another example, a WIPO
`
`Panel found that BCBSA’s Blue Marks had acquired a high degree of distinctiveness and fame,
`
`given the “longstanding use of the BLUE CROSS and BLUE SHIELD marks, both separately and
`
`in conjunction, [BCBSA’s] high volume of business transacted under or in connection with the
`
`marks, as well as the worldwide use, registration and recognition of the marks.” Blue Cross and
`
`Blue Shield Ass’n v. Garrett Ltd./John Nunley, WIPO Case No. D2003-0028 (March 12, 2003).
`
`II. Wound Sync Willfully Infringes BCBSA Trademarks through its Unauthorized Use.
`
`22.
`
`In or around September 2019, Wound Sync filed a trademark application (App. Ser.
`
`No. 88/628,369) for its original logo, a blue and green cross above the term “WoundSync”
`
`(“Abandoned Mark”), as depicted below:
`
`
`8 See, e.g., https://www.bradley.com/insights/publications/2013/04/one-cross--two-cross--red-
`cross--blue-cross-trad__ (last accessed June 23, 2023).
`
`7
`
`

`

`
`
`
`
`23.
`
`In its application, Wound Sync represented that it was already using the Abandoned
`
`Mark in commerce.
`
`24.
`
`In or around November 2019, BCBSA reached out to Wound Sync regarding its
`
`application because BCBSA was concerned the Abandoned Mark was likely to cause consumer
`
`confusion and dilution given its similarities with the Blue Cross marks. The parties discussed
`
`BCBSA’s concerns on January 10, 2020.
`
`25.
`
`In June 2020, Wound Sync abandoned its trademark application for the Abandoned
`
`Mark and based on BCBSA’s investigation, it appeared that Wound Sync ceased using the
`
`Abandoned Mark. Therefore, BCBSA discontinued its enforcement efforts against Wound Sync
`
`regarding the Abandoned Mark.
`
`26.
`
`About a year later, Wound Sync filed a new trademark application (Ser. App. No.
`
`97/186,345) for an updated mark, a blue cross above the term “WoundSync,” as depicted below:
`
`
`
`27.
`
`To be clear, despite being on notice about BCBSA’s concerns regarding the
`
`8
`
`

`

`
`
`Abandoned Mark, Wound Sync adopted the updated mark which is even more like BCBSA’s
`
`famous Blue Cross Marks.
`
`28.
`
`In its application for the updated mark, Wound Sync represents that it began using
`
`the updated mark in commerce at least since July 8, 2020, almost a year after BCBSA notified
`
`Wound Sync about its concerns with the Abandoned Mark.
`
`29. Wound Sync also has used and currently uses a variation of the updated mark that
`
`includes a standalone blue cross without the term “Wound Sync” (together with the updated mark,
`
`the “Infringing Marks”) as depicted below.
`
`30.
`
`As an example, below are screenshots of Wound Sync’s website depicting uses of
`
`the standalone Infringing Mark is shown below, with additional examples attached as Exhibit B.9
`
`
`
`
`9 See https://web.archive.org/web/20211027220004/https://woundsyncinc.com/faqs/(last accessed
`June 23, 2023). Since Wound Sync’s website, woundsyncinc.com, is currently inactive, BCBSA
`collected screen captures of an archived version of Wound Sync’s website.
`
`9
`
`

`

`
`
`
`
`31. Wound Sync uses the Infringing Marks in connection with a host of healthcare and
`
`related services, including without limitation, healthcare development and management services
`
`and on information and belief, direct patient care services, such as wound care and hyperbaric
`
`medicine services. This use is substantially similar to the services BCBSA uses the Blue Cross
`
`Marks as described supra in paragraph 13-15 (setting forth use of Blue Cross Marks in connection
`
`with inter alia health care management and consulting services; health care and medical services;
`
`health care delivery through medical clinics, physicians, wellness screening services, and wellness
`
`programs, including in wound care; and assessing healthcare service provider performance).
`
`32.
`
`On its LinkedIn profile, Wound Sync represents that it specializes in developing
`
`solutions for hospitals “where our provider group . . . staffs the hospital’s wound care center.”
`
`Indeed, Wound Sync represents that “We are, at our core, an independent provider group that is
`
`10
`
`

`

`
`
`solely focused on healing patients who entrust us with their care.” It then notes that Wound Sync
`
`has potential opportunities throughout the United States, so providers “who may have a passion
`
`for wound care” should “reach out to us.” A screen capture showing Wound Sync’s LinkedIn
`
`profile is attached as Exhibit C.
`
`33. Wound Sync has used and uses the Infringing Marks to advertise its healthcare
`
`related services, such as on its website, social media sites (e.g., LinkedIn) and on information and
`
`belief, on signage, and stationery. Also, Wound Sync has used and uses the Infringing Marks to
`
`promote its services to hospitals and other health care providers.
`
`34.
`
`In November 2022, the USPTO published Wound Sync’s new trademark
`
`application, and BCBSA confirmed that Wound Sync resumed its infringing activities by using
`
`the Infringing Marks in commerce. Since the Infringing Marks were even more like the Blue Cross
`
`Marks than the Abandoned Mark, as shown below, BCBSA recognized that the Blue Cross Marks
`
`would be diluted by the Infringing Marks, and consumers were likely to be confused regarding the
`
`source of Wound Sync’s services or deceived into believing BCBSA and Wound Sync were
`
`affiliated.
`
`
`
`Exemplary BCBSA Blue Cross Mark
`
`Wound Sync’s Infringing Mark
`
`
`
`
`
`
`
`11
`
`

`

`
`
`35.
`
`In an attempt to amicably resolve the dispute, BCBSA contacted Wound Sync in
`
`January 2023. BCBSA expressed its concern that the Infringing Marks were likely to confuse
`
`consumers, and asked if Wound Sync would amend the Infringing Marks and corresponding
`
`trademark application to mitigate any risk of confusion. Wound Sync refused.
`
`36.
`
`Since at least July 8, 2020, Wound Sync has willfully infringed the Blue Cross
`
`Marks, intending to cause consumer confusion and exploit the goodwill of the mark. On
`
`information and belief, Wound Sync was aware of BCBSA’s trademark rights in the Blue Cross
`
`Marks when it began using the Infringing Marks in commerce.
`
`37.
`
`On information and belief, as an in–network provider for BCBSTX with over 21
`
`years of experience in healthcare,10 Wound Sync’s cofounder, Dr. Pham–Hulen, was undoubtedly
`
`aware of BCBSA’s trademark rights before Wound Sync adopted the Infringing Marks. In fact,
`
`to become an in–network provider for BCBSTX, Dr. Pham–Hulen signed a Provider Agreement
`
`wherein Dr. Pham–Hulen agreed to avoid using BCBSA’s “name, symbols, trademarks or service
`
`marks in advertising, promotional or information materials” without prior written consent.
`
`38.
`
`If permitted to continue, Wound Sync’s use of the Infringing Marks will continue
`
`to damage and irreparably injure BCBSA, the Blue Marks, including the Blue Cross Marks, and
`
`BCBSA reputation and goodwill associated with the Blue Cross Marks. Wound Sync should not
`
`be permitted to reap the benefits of BCBSA’s extensive efforts to build a valuable and world–
`
`renown brand in its Blue Marks, including Blue Cross Marks.
`
`39.
`
`Furthermore, Wound Sync’s use of the Infringing Marks is detrimental to the
`
`public’s interest in being free from confusion as to the source, sponsorship, or affiliation between
`
`
`10 See https://www.medifind.com/doctors/han-p-pham-hulen/12544811 (last accessed June 23,
`2023).
`
`12
`
`

`

`
`
`BCBSA and Wound Sync. In particular, Wound Sync’s use of the Infringing Marks is likely to
`
`cause confusion, mistake, or deception as to the source or origin of both BCBSA’s and Wound
`
`Sync’s services, and is likely to falsely suggest a sponsorship, connection, license, or association
`
`between the two entities. The risk of confusion is exacerbated considering that Wound Sync’s
`
`cofounder, Dr. Pham–Hulen, contracts with BCBSTX, and accepts Blue Cross and Blue Shield
`
`insurance.
`
`40.
`
`Unless restrained from perpetuating its damaging acts, Wound Sync will continue
`
`to damage and irreparably harm BCBSA by damaging its valuable reputation and goodwill with
`
`the consuming public for which BCBSA has no adequate remedy at law.
`
`COUNT I
`Infringement of Federally Registered Trademarks
`(15 U.S.C. § 1114)
`
`
`
`41.
`
`BCBSA repeats and realleges paragraph 1 through 40 of this Complaint as if fully
`
`set forth herein.
`
`42.
`
`BCBSA owns the Blue Cross Marks that are registered (“Registered Blue Cross
`
`Marks”), including U.S. Reg. Nos. 0,554,488, 0,554,817, 1,699,627, 3,172,396, 3,288,740,
`
`4,111,938, and 5,352,918. BCBSA began using some of the Registered Blue Cross Marks in
`
`commerce at least as early as 1934 and has continuously and exclusively used the marks in the
`
`United States since then.
`
`43.
`
`The Registered Blue Cross Marks are valid and enforceable, and some of the
`
`Registered Blue Cross Marks are incontestable.
`
`44. Wound Sync’s use of the Infringing Marks is likely to cause confusion among
`
`relevant consumers and thus constitutes infringement of a registered trademark in violation of 15
`
`U.S.C. § 1114.
`
`13
`
`

`

`
`
`45.
`
`Since at least July 8, 2020, Wound Sync has willfully infringed upon the Registered
`
`Blue Cross Marks, intending to cause consumer confusion and exploit the goodwill of the marks.
`
`46.
`
`As a direct and proximate result of Wound Sync’s wrongful acts, BCBSA has
`
`suffered, is suffering, and will continue to suffer damages to its trademarks, business reputation,
`
`and goodwill. BCBSA does not have an adequate remedy at law and will continue to suffer
`
`irreparable injury unless Wound Sync is enjoined from engaging in further acts of infringement.
`
`COUNT II
`Trademark Infringement, False Designation and Unfair Competition
`(15 U.S.C. § 1125(a))
`
`BCBSA repeats and realleges paragraph 1 through 46 of this Complaint as if fully
`
`47.
`
`set forth herein.
`
`48.
`
`BCBSA owns the Blue Cross Marks. BCBSA began using some of the Blue Cross
`
`Marks in commerce at least as early as 1934 and has continuously and exclusively used the marks
`
`in the United States since then.
`
`49.
`
`Through its unauthorized use of the marks in interstate commerce as described
`
`above, Wound Sync has (i) infringed the Blue Cross Marks, including the Registered Blue Cross
`
`Marks and related common law marks; (ii) falsely designated the origin of its products and
`
`services; and (iii) competed unfairly with BCBSA, in violation of 15 U.S.C. § 1125(a).
`
`50. Wound Sync’s use of the Blue Cross Marks is likely to cause confusion and mistake
`
`and to deceive the public as to the approval, sponsorship, license, source or origin of Wound Sync’s
`
`products and services.
`
`51.
`
`Since at least July 8, 2020, Wound Sync has willfully infringed the Blue Cross
`
`Marks, intending to cause consumer confusion and exploit the goodwill of the marks.
`
`52.
`
`As a direct and proximate result of Wound Sync’s wrongful acts, BCBSA has
`
`14
`
`

`

`
`
`suffered, is suffering, and will continue to suffer damages to its trademarks, business reputation,
`
`and goodwill. BCBSA does not have an adequate remedy at law and will continue to suffer
`
`irreparable injury unless Wound Sync is enjoined from engaging in further acts of infringement.
`
`COUNT III
` Texas Common Law Trademark Infringement
`
`BCBSA repeats and realleges paragraph 1 through 52 of this Complaint as if fully
`
`53.
`
`set forth herein.
`
`54.
`
`BCBSA owns the Blue Cross Marks, which are valid and enforceable.
`
`55. Wound Sync’s actions as alleged herein, including the use of the Infringing Marks
`
`for its services, constitute trademark infringement in violation of Texas common law.
`
`56. Wound Sync’s infringing use of the Infringing Marks is likely to cause consumer
`
`confusion regarding whether its products and services originate from BCBSA or are associated or
`
`affiliated with BCBSA, and whether both organizations are associated or affiliated.
`
`57.
`
`As a direct and proximate result of Wound Sync’s wrongful acts, BCBSA has
`
`suffered, continues to suffer, and is likely to suffer damages to its business reputation and goodwill.
`
`BCBSA has no adequate remedy at law and, unless restrained, Wound Sync will continue to
`
`infringe and cause irreparable damage to BCBSA.
`
`COUNT IV
`Texas Common Law Unfair Competition
`
`BCBSA repeats and realleges paragraph 1 through 57 of this Complaint as if fully
`
`58.
`
`set forth herein.
`
`59. Wound Sync has been and is engaging in acts of unfair competition in violation of
`
`Texas common law—including by using the Blue Cross Marks—that are likely to cause confusion,
`
`mistake, or deception regarding the approval, sponsorship, license, source or origin of the Wound
`
`15
`
`

`

`
`
`Sync’s services.
`
`60. Wound Sync has damaged and will continue to damage BCBSA irreparably.
`
`BCBSA has suffered damage to its goodwill and reputation in the marketplace that money cannot
`
`compensate.
`
`61.
`
`Due to Wound Sync’s actions, BCBSA has no adequate remedy at law and is
`
`entitled to an injunction restraining Wound Sync from engaging in further acts of unfair
`
`competition.
`
`COUNT V
`Trademark Dilution
`(15 U.S.C. § 1125(c))
`
`BCBSA repeats and realleges paragraph 1 through 61 of this Complaint as if fully
`
`62.
`
`set forth herein.
`
`63.
`
`This claim is for the dilution of trademarks, pursuant to Section 43(c) of the Lanham
`
`Act, 15 U.S.C. § 1125(c).
`
`64.
`
`BCBSA’s Blue Cross Marks are distinctive and famous within the meaning of
`
`Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c) and were distinctive and famous prior to
`
`Wound Sync’s use of the Infringing Marks in commerce including, but not limited to, Wound
`
`Sync’s marketing, advertising, promotional, and social media efforts, and use in connection with
`
`its healthcare development and management, and direct patient care services.
`
`65. Wound Sync’s conduct, as discussed herein, is likely to dilute and is diluting the
`
`distinctive quality of BCBSA’s famous Blue Cross Marks. Wound Sync’s use of the Infringing
`
`Marks impairs the distinctiveness of those famous marks and lessens the capacity of those famous
`
`Blue Cross Marks to identify and distinguish the services marketed and sold by BCBSA, its
`
`Member Plans, and/or its licensees under those marks.
`
`16
`
`

`

`
`
`66.
`
`Upon information and belief, Wound Sync willfully and deliberately diluted the
`
`Blue Cross Marks. Further, Wound Sync has profited and been unjustly enriched due to services
`
`it would not have sold but for its use of the Blue Cross Marks.
`
`67. Wound Sync’s willful and deliberate acts described herein have caused irreparable
`
`injury and damage to BCBSA, its goodwill, and its reputation. Unless enjoined, Wound Sync will
`
`cause further irreparable injury for which BCBSA has no adequate remedy at law.
`
`PRAYER FOR RELIEF
`
`
`
`WHEREFORE, BCBSA demands a trial by jury,