Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1288786
`06/01/2023
`
`ESTTA Tracking number:
`
`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
`
`Address
`
`Correspondence
`information
`
`ModuForm, Inc.
`
`Corporation
`
`172 INDUSTRIAL ROAD
`FITCHBURG, MA 01420
`UNITED STATES
`
`Citizenship
`
`Massachusetts
`
`JOHN L. DUPRE'
`HAMILTON, BROOK, SMITH & REYNOLDS, P.C.
`530 VIRGINIA ROAD, P.O. BOX 9133
`FITCHBURG, MA 01420
`UNITED STATES
`Primary email: trademarks@hbsr.com
`Secondary email(s): john.dupre@hbsr.com, kristen.salvaggio@hbsr.com, chris-
`topher.jensen@hbsr.com
`978-341-0036
`
`Applicant information
`
`Application no.
`
`97207081
`
`Opposition filing
`date
`
`Applicant
`
`06/01/2023
`
`Bodypoint, Inc.
`SUITE 300
`558 FIRST AVENUE S.
`SEATTLE, WA 98104
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`05/16/2023
`
`Opposition period
`ends
`
`06/15/2023
`
`Class 010. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Arm supports adapted for medical use or
`for use by physically injured or handicapped persons; therapeutic and assistive devices adapted for
`persons with disabilities, namely, arm supports
`
`Class 012. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Apparatuses and accessories specially ad-
`apted for manual wheelchairs and electrically-powered wheelchairs namely, arm supports; apparatus
`for supporting and positioning handicapped persons as they occupy wheelchairs and power chairs,
`namely, arm supports specially adapted for wheelchairs
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`
`ESTTA1288786
`06/01/2023
`
`ESTTA Tracking number:
`
`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
`
`Address
`
`Correspondence
`information
`
`ModuForm, Inc.
`
`Corporation
`
`172 INDUSTRIAL ROAD
`FITCHBURG, MA 01420
`UNITED STATES
`
`Citizenship
`
`Massachusetts
`
`JOHN L. DUPRE'
`HAMILTON, BROOK, SMITH & REYNOLDS, P.C.
`530 VIRGINIA ROAD, P.O. BOX 9133
`FITCHBURG, MA 01420
`UNITED STATES
`Primary email: trademarks@hbsr.com
`Secondary email(s): john.dupre@hbsr.com, kristen.salvaggio@hbsr.com, chris-
`topher.jensen@hbsr.com
`978-341-0036
`
`Applicant information
`
`Application no.
`
`97207081
`
`Opposition filing
`date
`
`Applicant
`
`06/01/2023
`
`Bodypoint, Inc.
`SUITE 300
`558 FIRST AVENUE S.
`SEATTLE, WA 98104
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`05/16/2023
`
`Opposition period
`ends
`
`06/15/2023
`
`Class 010. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Arm supports adapted for medical use or
`for use by physically injured or handicapped persons; therapeutic and assistive devices adapted for
`persons with disabilities, namely, arm supports
`
`Class 012. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Apparatuses and accessories specially ad-
`apted for manual wheelchairs and electrically-powered wheelchairs namely, arm supports; apparatus
`for supporting and positioning handicapped persons as they occupy wheelchairs and power chairs,
`namely, arm supports specially adapted for wheelchairs
`
`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.
`
`1068987
`
`Register
`
`Principal
`
`Registration date
`
`07/05/1977
`
`Application date
`
`09/21/1976
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`MODU FORM
`
`NONE
`
`Class 020. First use: First Use: Jun 17, 1976 First Use In Commerce: Jun 17,
`1976
`PLASTIC FURNITURE
`
`U.S. registration
`no.
`
`5758354
`
`Register
`
`Principal
`
`Registration date
`
`05/21/2019
`
`Application date
`
`08/07/2017
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`MODUFORM
`
`NONE
`
`Class 020. First use: First Use: Jun 17, 1976 First Use In Commerce: Jun 17,
`1976
`Furniture
`
`Attachments
`
`0238.0051-000 - Notice of Opposition.pdf(123196 bytes )
`
`Signature
`
`Name
`
`Date
`
`/John L. DuPre'/
`
`John L. DuPre'
`
`06/01/2023
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposer,
`
`
`ModuForm, Inc.,
`
`
`
`v.
`
`Bodypoint, Inc.,
`
`
`
`
`
`Applicant.
`
`
`
`
`
`
`Opposition No.:
`Serial No. 97207081
`
`
`
`
`NOTICE OF OPPOSITION
`
`In the matter of an application for registration of the mark MODUFORM, Serial No.
`
`97207081, filed January 7, 2022 by Bodypoint, Inc., of Suite 300, 558 First Avenue S., Seattle,
`
`Washington 98104, and published for Opposition in the Official Gazette of May 16, 2023.
`
`Opposer, ModuForm, Inc., a Massachusetts corporation, having a place of business at
`
`172 Industrial Road, Fitchburg, Massachusetts 01420, believes that it would be damaged by
`
`registration of the mark as sought in the foregoing application and hereby opposes the same.
`
`The grounds of the opposition are as follows:
`
`1.
`
`By the application herein opposed, Applicant seeks to register the standard
`
`character mark MODUFORM as a trademark for certain goods and services in Classes 10 and
`
`12. This Opposition opposes the registration of such mark.
`
`2.
`
`Opposer is the owner of all right, title, and interest in its MODUFORM mark for
`
`use in connection with furniture.
`
`3777446.v1
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`3.
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`Since the initial use of the MODUFORM mark at least as early as June 17, 1976,
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`Opposer has made broad and substantial use of the mark in connection with the promotion and
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`selling of its goods and services.
`
`4.
`
`The MODUFORM mark was adopted by Opposer at least as early as June 17,
`
`1976, and has been used by Opposer continuously in connection with the advertising, promotion
`
`and offering of its goods and services in interstate commerce and in connection with its business
`
`operations .
`
`5.
`
`Opposer’s MODUFORM mark is of significant value to Opposer as an
`
`identification of source in connection with the promotion and offering of its goods and services
`
`and in connection with its operations. Opposer’s MODUFORM mark distinguishes such goods
`
`and services from the goods and services of others.
`
`6.
`
`Opposer has registered the mark MODUFORM as a standard character mark on
`
`the Principal Register for furniture, issued on May 21, 2019, as U.S. Trademark Registration No.
`
`5,758,354.
`
`7.
`
`Opposer has registered the mark MODU FORM and design
`
`as a
`
`word and design mark on the Principal Register for use in connection with plastic furniture,
`
`issued on September 21, 1976, as U.S. Trademark Registration No. 1,068,987. The trademark
`
`registration is now incontestable.
`
`8.
`
`Opposer is in the business of selling furniture and mattresses, including products
`
`designed for high-use and active environments such as, but not limited to, rehabilitation
`
`facilities, healthcare facilities and offices, detention facilities, mental health facilities, public
`
`spaces, nursing homes, group homes, and schools.
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`3777446.v1
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`Page 2
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`9.
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`Since at least as early as 1976 and continuously to the present, Opposer has
`
`marked and sold its furniture in association with the MODUFORM mark to healthcare providers
`
`and institutions, such as State Mental Health Hospitals, Behavioral Health facilities, Private
`
`Psychiatric Hospitals, VA Hospitals, Acute Care Hospitals, and nursing homes. Since at least as
`
`early as 1976, Opposer has continued to send national mailings of its brochures promoting and
`
`advertising its products in association with the MODUFORM mark to healthcare providers and
`
`institutions, and has continued to show its products in association with the MODUFORM mark
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`at mental health conferences and industry events.
`
`10.
`
`On its website at www.moduform.com (the “ModuForm Website”), Opposer
`
`provides detailed product information about its products, its primary markets, and other salient
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`product features. The ModuForm Website includes information and marketing materials directed
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`to Behavior Health Hospitals, Group Homes, Residential Treatment Facilities, and other medical
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`care providers at least on the following pages: https://moduform.com/behavioral-health/;
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`https://moduform.com/residential-treatment/; https://moduform.com/doctor-on-call-sleep-room/;
`
`and https://moduform.com/group-homes/
`
`11.
`
`Sales of furniture and other products to hospitals and other healthcare providers is
`
`an important part of Opposer’s business. Focusing on 2018 to the present, Opposer’s customers
`
`have included more than 350 different hospitals and healthcare providers.
`
`12.
`
`The MODUFORM mark as sought to be registered by Applicant is identical to
`
`Opposer’s MODUFORM mark and is likely to cause confusion or mistake or to deceive
`
`purchasers of goods and services provided by Opposer and/or provided by Applicant.
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`3777446.v1
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`Page 3
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`13.
`
`The goods and services identified in of Applicant’s application are “Arm supports
`
`adapted for medical use or for use by physically injured or handicapped persons; therapeutic and
`
`assistive devices adapted for persons with disabilities, namely, arm supports” in Class 10 and
`
`“Apparatuses and accessories specially adapted for manual wheelchairs and electrically-powered
`
`wheelchairs namely, arm supports; apparatus for supporting and positioning handicapped
`
`persons as they occupy wheelchairs and power chairs, namely, arm supports specially adapted
`
`for wheelchairs” in Class 12. The various goods identified in Applicant’s application are closely
`
`related to the goods and services that Opposer provides under its MODUFORM mark. For
`
`example, arm supports are a component of chairs, sofas, and other furniture, including furniture
`
`adapted for healthcare settings and nursing homes. As a result, customers of Opposer and others
`
`in the trade are likely to be confused into believing that there is some connection between
`
`Applicant’s goods and services identified in Applicant’s application and those provided under
`
`the MODUFORM mark of Opposer.
`
`14.
`
`On October 26, 2022, the United States Patent and Trademark Office (“USPTO”)
`
`issued an Office Action rejecting Applicant’s application at least because of likelihood of
`
`confusion with the trademarks registered by Opposer as Registration Nos. 5,758,354 and
`
`1,068,987. The USPTO stated that Applicant’s applied-for “MODUFORM” mark was identical
`
`to the “MODUFORM” mark of Registration No. 5,758,354 and “identical in sound and virtually
`
`identical in appearance” to the
`
`word and design mark of Registration No.
`
`1,068,987.
`
`15.
`
`On March 13, 2023, a response to the October 26, 2022 Office Action was filed
`
`on behalf of Applicant. In the response, Applicant apparently conceded that the marks were
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`3777446.v1
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`Page 4
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`identical, relying only on its assertion that there are distinctions between the goods, trade
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`channels, and an assertion that the purchasers are sophisticated and discerning.
`
`16.
`
`Applicant’s assertion that there are distinctions in the goods relies on a
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`submission of photos selectively copied from the ModuForm Website. The chosen photos show
`
`what Applicant calls “communal setting” use. Omitted is information on the same website
`
`showing that Opposer markets and sells furniture that is designed for, marketed to, and sold to
`
`medical providers such as behavioral health hospitals and other medical facilities. Further, the
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`response omits Opposer’s medical related customers when identifying the types of customers
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`Opposer sells and advertises product to, stating, “Registrant promotes its products for use in a
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`variety of communal settings, including residence halls, schools, libraries, residential treatment
`
`centers, detention centers and the like,” excluding Opposer’s promotion and sale of its products
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`to medical customers, such as but not limited to, behavior health and doctor on-call facilities
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`despite them clearly being identified on the ModuForm Website.
`
`17. When addressing trade channels, Applicant admitted in the response that its
`
`applied-for MODUFORM mark “is used in connection with clinically developed arm supports
`
`for wheelchairs, which are sold to wheelchair users (or caregivers) seeking additional support for
`
`their arms while using a wheelchair.” Despite Applicant’s contrary assertions, these caregivers
`
`are existing and potential purchasers of Opposer’s products.
`
`18.
`
`Following the submission of Applicant’s response of March 13, 2023, the USPTO
`
`issued a Notice of Publication for Applicant’s applied-for mark on April 26, 2023.
`
`19.
`
`The statements made by Applicant in its response of March 13, 2023 are
`
`misrepresentations of fact relating to Opposer’s goods and services, and to the channels of trade
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`3777446.v1
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`Page 5
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`in which Opposer’s goods are marketed and sold. These misrepresentations are material to
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`Applicant obtaining allowance for the mark.
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`20.
`
`On information and belief, the statements made by Applicant in its response of
`
`March 13, 2023, were knowingly false, material misrepresentations of fact based on the selective
`
`omission of Opposer’s medical-related products and customers from the evidence submitted by
`
`Applicant to the USPTO, which evidence Applicant gathered from the ModuForm Website.
`
`21.
`
`Purchasers and customers, as well as prospective purchasers and customers,
`
`familiar with Opposer’s goods, services, and business identified by the MODUFORM mark are
`
`likely to be misled into believing, contrary to fact, that Applicant’s goods provided under the
`
`MODUFORM mark opposed herein emanate from or are in some way sponsored by Opposer, all
`
`to Opposer’s irreparable damage through loss and/or dilution of its goodwill as symbolized by
`
`Opposer’s MODUFORM mark.
`
`22.
`
`Granting of the registration for the MODUFORM mark as sought by Applicant,
`
`through the application herein opposed, would place Applicant in a position to harass and cause
`
`annoyance to Opposer to the damage of Opposer. Such registration could inhibit Opposer in its
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`use of its MODUFORM mark in promoting its goods, which would manifest damage upon
`
`Opposer. Finally, such registration would constitute prima facie evidence of an exclusive right
`
`of Applicant to use the MODUFORM mark for the goods and services identified in its
`
`application herein opposed and for other confusingly similar uses, thereby enabling Applicant to
`
`occupy a position in the trade that would further compound confusion on the part of the
`
`purchasing public, all to the damage of Opposer.
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`3777446.v1
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`Page 6
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`WHEREFORE, Opposer Prays that the application of Serial No. 97207081, filed January
`
`7, 2022 for registration of the MODUFORM mark in Classes 10 and 12, be refused and that this
`
`Opposition be sustained.
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`MODUFORM, INC.
`Respectfully submitted,
`
`
`_/John L. DuPre’/ __________
`John L. DuPré
`Kristen K. Salvaggio
`HAMILTON, BROOK, SMITH & REYNOLDS, P.C.
`155 Seaport Boulevard
`Boston, Massachusetts 02210
`Telephone: (617) 607-5900
`Facsimile: (978) 341-0136
`Attorneys for Opposer
`
`
`Dated: June 1, 2023
`
`
`3777446.v1
`
`Page 7
`
`
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