Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA528207
`ESTTA Tracking number:
`03/22/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92053738
`Plaintiff
`United HomeCare Services, Inc.
`JORGE ESPINOSA
`ESPINOSA TRUEBA PL
`1428 BRICKELL AVE, SUITE 100
`MIAMI, FL 33131
`UNITED STATES
`trademark@etlaw.com
`Motion for Summary Judgment
`Jorge Espinosa
`trademark@etlaw.com, jespinosa@etlaw.com
`/Jorge Espinosa/
`03/22/2013
`Motion for summary judgment.pdf ( 20 pages )(242495 bytes )
`Exhibit 1 - Declaration of Jose R Fox - Intellectual Property Case.pdf ( 4 pages
`)(1316231 bytes )
`Exhibit 1.A.pdf ( 5 pages )(2379358 bytes )
`Exhibit 1.B.PDF ( 20 pages )(3034738 bytes )
`Exhibit 1.C.pdf ( 49 pages )(4806793 bytes )
`Exhibit 2 - Declaration of Joaquin Leon Esq - Intellectual Property Case.pdf ( 4
`pages )(204845 bytes )
`Exhibit 3 - 76644996 united home care est 1988 specimen 1.pdf ( 2 pages
`)(610536 bytes )
`Exhibit 4 - Registrants Response to Petitioners First Set of Interrogatories.pdf (
`12 pages )(3993033 bytes )
`Exhibit 5 - United Home care NY corporate info.pdf ( 2 pages )(122887 bytes )
`Exhibit 6 - Newletters - Bates # 200, 208, 235 & 238.pdf ( 4 pages )(1368327
`bytes )
`Exhibit 2.A.pdf ( 5 pages )(2379358 bytes )
`Exhibit 2.B.PDF ( 20 pages )(3034738 bytes )
`Exhibit 7 - United Staffing Registry, Inc. Services page.pdf ( 1 page )(422381
`bytes )
`Exhibit 2.C.pdf ( 49 pages )(4806793 bytes )
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of:
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`Registration No.:
`Registered:
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`Trademark:
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`Registrant:
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`________________________________________________
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`United Home Care Services, Inc.,
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`3,185,323
`December 19, 2006
`UNITED HOME CARE EST. 1988 and Design
`Benjamin H. Santos
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`Petitioner,
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`v.
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`Benjamin H. Santos,
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`Cancellation No. 92053738
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`
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`Registrant.
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`
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`________________________________________________
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`PETITIONER’S MOTION FOR SUMMARY JUDGMENT
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`
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`Petitioner, United Home Care, Inc. (“Petitioner” or “UHC”), by and through undersigned
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`counsel, hereby moves for summary judgment against Benjamin H. Santos (“Respondent”)
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`pursuant to Fed. R. Civ. P. 56 and TBMP § 528, as to the first count of its petition for
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`cancellation, based on priority and likelihood of confusion. The undisputed material facts
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`indicate that Petitioner has been using its mark since 1974, 14 years before the date Respondent
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`asserts as its date of first use for its identical mark. Accordingly, Petitioner must prevail as a
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`matter of law and Respondent’s registration should be cancelled.
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`

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`UNDISPUTED MATERIAL FACTS
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`Petitioner UHC
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`
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`UHC is a non-profit organization, governed by a volunteer board of directors, which
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`provides home health services to the elderly and to disabled adults, as well as to their caregivers.
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`UHC works in partnership with private and public agencies concerned with the care of the
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`elderly and disabled. See Declarations of Jose R. Fox and Joaquin Leon, Esq. (“UHC
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`Declarations”)1 attached hereto as Exhibits “1”, and “2”, each at ¶4. UHC’s services include
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`non-skilled services such as personal caregiver, homemaker, escort, respite, as well as skilled
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`services such as nursing care and wound care. Id at ¶5.
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`UHC was founded in 1974, as a division of United Way, with the objective of improving
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`the lives of indigent clients in need of in-home services. Id at ¶6. Since then, it has grown and
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`has continued to establish partnerships to better serve the community. In 1976, UHC’s first full-
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`time Executive Director was appointed. Id at ¶7. In 1979, UHC became independent of United
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`Way and became Miami-Dade County’s official lead agency for state community care for the
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`elderly. Id at ¶8. In 1993, UHC became a licensed home health agency and obtained Medicaid
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`certification. Id at ¶9. In 1998, UHC became a Certified Medicare Agency. Id at ¶10. In 2004,
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`the year it celebrated its 30th anniversary, UHC became accredited by CHAP (Community Health
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`Accreditation Program) and became a Nursing Home Diversion program provider offering a full
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`continuum of health care services for those at high risk of nursing home placement. Id at ¶11.
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`In 2001, the South Florida Business Journal ranked UHC as the largest home health care
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`agency in South Florida. Id at ¶12.
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`1 These declarations, and the documents identified therein and attached thereto, are offered into evidence on
`summary judgment. See TBMP 528.05(b).
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` 2
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`

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`Over its 35+ year history, UHC has received a number of honors and accolades. In 1993,
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`Florida Governor Lawton Chiles recognized UHC’s commitment to providing services for the
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`elderly. In that same year, the United Way of Dade County presented UHC an award for
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`excellence in non-profit management “in recognition of exemplary fiscal and program
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`management among social services agencies with budgets of over $2 million.” In 1994, UHC
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`received the “Statewide Management Award” from the Florida Association of Non-Profit
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`Organizations. In the same year, UHC’s President and CEO, Jose R. Fox, received the United
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`Way of Dade County’s “Outstanding Human Services Professional Award in recognition of his
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`leadership of UHC. Also in 1994, the city of Coral Gables, Florida honored UHC for its services
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`to the elderly. In 1997, UHC was awarded “Best Home Health Agency” by Medical Business of
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`South Florida. In 1999, Miami-Dade County declared May 13, 1999 “United Home Care
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`Services Day” in recognition of UHC’s 25 years of service to the community. In 2005, UHC
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`received the Florida Medical Quality Assurance Inc. Achievement Award for outstanding
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`achievement in outcome-based quality improvement. In that same year, UHC was awarded a
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`grant from the Health Foundation of South Florida to implement a new technology that gives
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`UHC the ability to monitor a client’s vital signs and other clinically significant information
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`remotely, linking the client from his home to a registered nurse at UHC’s facility. Also, in 2005,
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`Board member Jose K. Fuentes was honored with a Valor Award for his work with UHC. In
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`2007, UHC was chosen as a finalist for the Alliance for Human Services’ “Making a Difference”
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`community service award. In that same year, UHC was selected for the 2007 Home Care Elite,
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`an annual compilation of the top 25% most successful Medicare-certified home health care
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`providers in the Unites States. Id at ¶13; see also compilation of UHC awards and honors,
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`attached as Exhibit “A” to the UHC Declarations.
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` 3
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`

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`UHC continues to expand the services it offers. In 2009, UHC launched additional
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`services including a private pay program, and programs for dementia support, chronic disease
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`management, medication management, depression screening, and depression management. See
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`also compilation of literature and media articles discussing UHC’s services, attached as Exhibit
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`“B” to the UHC Declarations. Id at ¶14.
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` In 1995, in commemoration of its 20th anniversary, UHC established the Annual Claude
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`Pepper Memorial Awards Dinner to honor individuals who have improved the lives of the
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`elderly and disabled. Last year, in 2009, UHC celebrated its 35th anniversary and its 15th annual
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`Claude Pepper Memorial Awards Dinner. Id at ¶15; see also compilation of awards dinner
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`programs attached as Exhibit “C” to UHC Declarations.
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`Throughout its proud 35+ history of service, UHC has continuously identified itself and
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`its services to the public with the mark “UNITED HOME CARE”. Id at ¶16. UHC sometimes
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`appends the descriptive terms “services” and “Inc.”, in connection to its use of “UNITED HOME
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`CARE”, as in its corporate name “United Home Care Services, Inc.”, or as on its website banner
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`logo, which contains the literal element “United HomeCare Services”, and other times uses
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`“UNITED HOME CARE” without
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`these
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`terms,
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`as
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`in
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`its
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`domain
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`name
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`www.unitedhomecare.com. Id at ¶17. UHC sometimes, in using its mark, omits the space
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`between the words “HOME” and “CARE and employs a stylized capitalization of the letters H
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`and C, as in “United HomeCare” or “United HomeCare Services”. Id at ¶18. As a result of
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`UHC’s long use of the UNITED HOME CARE mark and the outstanding reputation it has built
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`since 1974, UHC’s UNITED HOME CARE mark enjoys significant public recognition and
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`goodwill. Id at ¶19.
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` 4
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`

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`UHC believes that it is being, and will continue to be, harmed by Respondent’s
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`registration of the mark UNITED HOME CARE for home healthcare services because
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`Respondent would have presumptive exclusive rights to UHC’s UNITED HOME CARE mark
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`for services that UHC renders. UHC also believes that it is being, and will continue to be,
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`harmed by Respondent’s registration of the mark UNITED HOME CARE for home healthcare
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`services because the existence of such registration would likely prevent the USPTO from
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`granting UHC a registration for its mark. Id at ¶20.
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`Respondent
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`
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`On December 19, 2006, Respondent was awarded a registration for the mark UNITED
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`HOME CARE EST. 1988 for “Employment agency services, employment staffing, recruitment,
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`placement, hiring and career networking services, also known as, employment counseling; career
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`placement, personnel management consultation; personnel management; personnel placement
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`and recruitment; personnel relocation; employment outplacement services in International Class
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`44.” See United States Trademark Registration No. 3,185323.2
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`
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`Although the description might seem different from Petitioner’s home health care services,
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`a review of Respondent’s own specimen shows that its employment services are actually
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`providing home health care attendants for the elderly, disabled and handicapped. See specimen
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`submitted with Trademark Application Ser No. 78770431 a copy of which is attached hereto as
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`Exhibit “3”.3 In its interrogatory responses, Respondent claims to offer services to health care
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`facilities. See First Responses to Interrogatories 5(b) attached hereto as Exhibit “4”.4
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`2 The certificate of the registration at issue is part of the evidentiary record on summary judgment. See TBMP
`§528.05(a); 37 C.F.R. §2.122(d)(1).
`3 The entire file of the subject registration is part of the evidentiary record on summary judgment. See TBMP
`§528.05(a); 37 C.F.R. §2.122(b).
`4 Discovery responses in the case may be submitted and made a part of the evidentiary record on summary
`judgment. See TBMP §528.05(a).
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` 5
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`

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`Respondent further claims to offer services to “hospitals, long term care facilities, and
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`individuals in need of temporary nursing services or home health aides.” See Id. 24
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`emphasis added.
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`
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`Respondent’s claimed date of first use of the UNITED HOME CARE mark on these
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`services is April 12, 1988; approximately 14 years after Petitioner UHC began its use of
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`UNITED HOME CARE. The New York corporate records reflect that the although the
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`corporation was formed in 1974, the corporation was called United Housekeeping Service, Inc.
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`until it changed its name to United Home Care Service, Inc. in 1980, six years after Petitioner
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`commenced use. See copy of New York Department of State Division of Corporations Entity
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`Information Form for United Home Service, Inc. attached hereto as Exhibit “5”.5 Even viewing
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`the facts in the light most favorable to Respondent, and accepting their asserted date of first use
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`as true, Petitioner had been using the mark at issue for a significant period before Respondent
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`even existed under the corporate name, much less began to use of its mark.
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`
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`Respondent has engaged in intentional acts to create confusion and a false association with
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`Petitioner’s well known mark. These acts have blurred any geographic distance between the
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`parties. In its newsletters at bates stamp locations 200, 208, 235 and 238, Respondent placed a
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`large ad which, while only disclosing offices in New York and New Jersey, places the accused
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`trademark next to the word Florida. See copy of relevant newsletter pages attached hereto as
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`Exhibit “6”. The same banner can be seen in the background of other photos. See Id. at bates
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`number 207.
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`5 Official records may be submitted and made a part of the evidentiary record on summary judgment. See TBMP
`§528.05(a); 37 C.F.R. §2.122(e).
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` 6
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`

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`The only purpose of this placement in the ad is to create a false association with Petitioner’s well
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`
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`known UNITED HOMECARE trademark.
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`ARGUMENT
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`I.
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`Summary Judgment on the basis of Superior Rights Arising from Prior use by
`Petitioner.
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`A.
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`Standard on Summary Judgment.
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`
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`Summary judgment is appropriate where there are no genuine issues of material fact in
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`dispute, thus allowing the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c);
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`Celotex Corp. v. Catrett, 477 U.S. 317 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242
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`(1986). The purpose of the motion is judicial economy, that is, to avoid an unnecessary trial
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`where there is no genuine issue of material fact and more evidence than is already available in
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`connection with the summary judgment motion could not reasonably be expected to change the
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`result in the case. See, e.g., Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 222 USPQ 741
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`(Fed. Cir. 1984).
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`
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`A factual issue is material when its resolution would affect the outcome of the proceeding
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`under governing law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A fact is
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`genuinely in dispute if the evidence of record is such that a reasonable fact finder could return a
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` 7
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`

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`verdict in favor of the nonmoving party. See Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d
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`766 (Fed. Cir. 1993). However, a dispute over a fact which would not alter the Board's decision
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`on the legal issue will not prevent entry of summary judgment. See, for example, Kellogg Co. v.
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`Pack'em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990), aff'd, 951 F.2d 330, 21 USPQ2d 1142
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`(Fed. Cir. 1991).
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`
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`The evidence on summary judgment must be viewed in a light most favorable to the non-
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`movant, in this case Respondent, and all justifiable inferences are to be drawn in Respondent’s
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`favor. Lloyd's Food Products, Inc. v. Eli's, Inc., 987 F.2d 766, 767, 25 USPQ2d 2027, 2029
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`(Fed. Cir. 1993); Opryland USA Inc. v. Great American Music Show, Inc., 970 F.2d 847 (Fed.
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`Cir. 1992; Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir.
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`1992). However, Respondent may not rest on mere denials or conclusory assertions, but rather
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`must proffer countering evidence, by affidavit or otherwise, showing that there is a genuine
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`factual dispute for trial. See Enbridge, Inc. v. Excelerate Energy Limited Partnership, 92
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`USPQ2d 1537 (TTAB October 6, 2009). The Board may not resolve issues of material fact; it
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`may only ascertain whether issues of material fact exist. See Lloyd's Food Products, 987 F.2d at
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`766, 25 USPQ2d at 2029; Olde Tyme Foods, 961 F.2d at 200, 22 USPQ2d at 1542.
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`
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` Petitioner prevails on its claim for cancellation under Section 2(d) of the Lanham Act if
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`it establishes standing, priority, and likelihood of confusion. See Green Spot, Ltd. v. Vitasoy
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`Int’l Holdings, Ltd., 86 USPQ2d (TTAB 2008). There are no genuine issues of material fact
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`with respect to any of the elements. Accordingly, the Board should grant summary judgment in
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`favor of Petitioner and Respondent’s registration should be cancelled.
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` 8
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`

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`B.
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`Standing
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`
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`Any person who believes it is or will be damaged by registration of a mark has standing
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`to file a petition for cancellation. See TBMP §309.03(b); 15 U.S.C. §§1063 and 1064.
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`Petitioner has standing because is the prior user of the UNITED HOME CARE mark for home
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`health care services. Green Spot, 86 USPQ2d 1283. There is also no dispute that Petitioner has
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`an interest in using the UNITED HOME CARE mark in its business and that the parties are
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`engaged in the sale of the same or similar services, or, at minimum, services that are within the
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`normal expansion of one another’s businesses. C.f. Jewels Vigilance Committee Inc. v.
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`Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987); Otto Roth & Co. v. Universal
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`Corp., 640 F.2d 1317, 209 USP 40 (CCPA 1981); Golomb v. Wadsworth, 592 F.2d 1184, 201
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`USPQ 200 (CCPA 1979); Binney & Smith, Inc. v. Magic Marker Industries, Inc., 222 USPQ
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`1003 (TTAB 1984). It is also beyond dispute that Petitioner believes, reasonably, that future
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`applications for registration of variants of its UNITED HOME CARE mark for home healthcare
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`services could be refused in view of Respondent’s registration for the UNITED HOME CARE
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`mark for healthcare services. See Cerveceria Modelo, S.A. de C.V. v. R.B. Marco & Sons, Inc.,
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`55 USPQ2d 1298 (TTAB 2000); Hartwell Co. v. Shane, 17 USPQ2d 1569 (TTAB 1990).
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`Finally, as described below, a review of the undisputed facts reveals that Respondent has a
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`meritorious, indeed compelling, claim of likelihood of confusion in view of the identical
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`channels of trade. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ
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`185, 189 (CCPA 1982); Metromedia Steakhouses, Inc. v. Pondco II Inc., 28 USPQ2d 1205, 1209
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`(TTAB 1993); Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 1326, 217 USPQ 641,
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`648 (Fed. Cir. 1983); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1657 (TTAB
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`2002); The Nestle Company Inc. v. Nash-Finch Co., 4 USPQ2d 1085, 1087 (TTAB 1987);
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` 9
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`

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`Liberty Trouser Co. v. Liberty & Co., 222 USPQ 357, 358 (TTAB 1983). Any one of these
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`reasons alone is sufficient to establish standing, and there can be no serious question that
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`Petitioner has standing to bring this Cancellation proceeding.
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`C.
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`Priority
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`To establish priority on a likelihood of confusion claim brought under Trademark Act §
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`2(d), a party must prove that, vis-a-vis the other party, it owns "a mark or trade name previously
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`used in the United States ... and not abandoned...." See 15 U.S.C. § 1052(d). A party may
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`establish its own prior proprietary rights in a mark through ownership of a prior registration,
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`actual use or through use analogous to trademark use which creates a public awareness of the
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`designation as a trademark identifying the party as a source. See 15 U.S.C. §§ 1052(d) and 1127;
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`see also T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996).
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`Here, the undisputed evidence is that Petitioner began its use of the UNITED HOME CARE
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`mark 14 years before Respondent began its use, and six years before registrant even adopted the
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`corporate name, and since then Petitioner has not abandoned the mark. Accordingly, there is no
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`genuine dispute of material fact as to priority.
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`D.
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`Likelihood of Confusion
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`
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`In determining whether there is any genuine issue of material fact relating to the legal
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`question of likelihood of confusion, the Board must consider all of the probative facts in
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`evidence which are relevant to the factors bearing on likelihood of confusion as identified in In
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`re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). As noted in
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`the du Pont decision itself, various factors, from case to case, may play a dominant role. Id.,
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`177 USPQ at 567. Even a single du Pont factor may be dispositive in certain cases. See
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`Kellogg Co. v. Pack'em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990), aff'd, 951 F.2d 330,
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`10
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`
`
`
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`

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`21 USPQ2d 1142 (Fed. Cir. 1991). In any likelihood of confusion analysis, the two “key” du
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`Pont factors are the similarities of the marks and the similarities of the goods. Federated
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`Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1776) ("The
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`fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in
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`the essential characteristics of the goods and differences in the marks”); see also In re Azteca
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`Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999). The undisputed record here
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`pertains to these two key factors, both of which dictate overwhelmingly in favor of a finding of
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`likelihood of confusion.
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`
`
`
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`i.
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`Similarity Between the Marks
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`In a determination of whether Petitioner’s mark and the registered mark, when viewed
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`in their entireties, are similar in terms of appearance, sound, connotation and commercial
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`impression, the test is not whether the marks can be distinguished when subjected to a side-by-
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`side comparison, but rather whether the marks are sufficiently similar in terms of their overall
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`commercial impressions that confusion as to the source of the goods or services offered under
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`the respective marks is likely to result. H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715
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`(TTAB 2008). The focus is on the recollection of the average purchaser, who normally retains a
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`general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper
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`Co., 190 USPQ 106 (TTAB 1975). Furthermore, although the marks at issue must be
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`considered in their entireties, it is well settled that one feature of a mark may be more
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`significant than another, and it is not improper to give more weight to this dominant feature in
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`determining the commercial impression created by the mark. See In re National Data Corp.,
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`753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
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`11
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`

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`
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`There is no genuine issue of material fact that the marks are identical or nearly identical
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`in appearance, sound, meaning and commercial impression. Palm Bay Imports, Inc. v. Veuve
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`Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed.
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`Cir. 2005). Both marks are “UNITED HOME CARE”. Both marks consist of the terms
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`"UNITED", “HOME”, and “CARE” in direct sequence.
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`
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`The only even marginally arguable differences between the marks is that Petitioner’s
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`mark sometimes appends the descriptive terms “services” or “Inc.”, as in the corporate name
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`“United Home Care Services” or “United Home Care Services, Inc.” or omits the space
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`between the words “HOME” and “CARE and employs a stylized capitalization, as in “United
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`HomeCare” or “United HomeCare Services”. Such minor differences are not sufficient to
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`create a genuine issue as to the similarity or dissimilarity between the marks. Marks may be
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`confusingly similar in appearance, sound, meaning and commercial impression despite the
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`addition, deletion or substitution of letters or words, the addition or deletion of spaces between
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`words, or the presence of or absence of corporate entity designations. See Cunningham v.
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`Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (quoting, In re
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`National Data Corp., 24 USPQ2d at 752 ("Regarding descriptive terms, this court has noted
`
`that the descriptive component of a mark may be given little weight in reaching a conclusion on
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`the likelihood of confusion"); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB
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`2001) (disclaimed matter is often "less significant in creating the mark's commercial
`
`impression; In re Packaging Specialists, Inc., 221 USPQ 917, 919 (TTAB 1984) (the element
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`“INC.” [in PACKAGING SPECIALISTS, INC.] has “no source indication or distinguishing
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`capacity”). Moreover, the dominant features of the marks in question, and therefore the
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`portions due the most weight in the analysis, “UNITED” “HOME” and “CARE”, are identical.
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`12
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`

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`See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749; In re Couriaire Express Int'l,
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`Inc., 222 USPQ 365, 366 (TTAB 1984) (capitalization of certain letters in mark insufficient to
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`establish distinctiveness); Aromatique Inc. v. Lang, 25 USPQ2d 1359 (TTAB 1992) (finding
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`alterations to typeface and capitalization did not change commercial impression of mark); see
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`e.g., In re Vega, 2009, Serial No. 77279955, TTAB LEXIS 493 (TTAB July 16, 2009) (non-
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`precedential) (finding the deletion of the space between terms insufficient to distinguish the
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`marks, citing RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980)
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`(similarity in sound alone may be sufficient to support a finding of likelihood of confusion));
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`see also, Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975), and In re Cresco
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`Mfg. Co., 138 USPQ 401 (TTAB 1963)). There is no meaningful difference between the
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`marks.
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`Respondent, as the registrant of an identical mark, cannot seriously challenge the
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`inherent distinctiveness or strength of Petitioner’s mark. This is especially true because
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`Respondent did not rely on an assertion of acquired distinctiveness in prosecuting its trademark
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`application, but instead implicitly asserted that the non-disclaimed features of its mark are
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`inherently distinctive. If Petitioner’s mark is not protectable after 35 years of use,
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`Respondent’s identical mark certainly is not protectable after 24. But if Respondent did assert
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`that Petitioner’s mark is weak, this argument would change nothing even if it succeeded. Even
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`a weak mark is entitled to protection against the registration of a nearly identical mark, like
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`Respondent’s for closely related goods or services. See King Candy Co. v. Eunice King's
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`Kitchen, Inc., 496 F.2d 1400 (CCPA 1974).
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`The first du Pont factor weighs heavily against Respondent because Petitioner’s mark is
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`extremely similar to, if not nearly identical to, the registered mark. In re Martin's Famous
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`Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
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`ii.
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`Similarity Between the Services
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`Next, the Board must consider whether Petitioner’s services and the services of the
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`Respondent, and the channels of trade through which the services travel, are related. See du
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`Pont., 476 F.2d 1357, 177 USPQ 563. In order to find that there is a likelihood of confusion, it
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`is not necessary that the goods and/or services on or in connection with which the marks are
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`used be identical or even competitive. It is enough if there is a relationship between them such
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`that persons encountering them under their respective marks are likely to assume that they
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`originate from the same source or that there is some association between their sources. See,
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`e.g., On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir.
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`2000). Moreover, Respondent may not restrict the scope of its services in the registration by
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`extrinsic argument or evidence, for example, as to the quality or price of the goods. See, e.g., In
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`re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986). Rather, the nature and scope
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`of a party's goods or services must be determined on the basis of the goods or services recited
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`in the registration, which is the broad umbrella category “home healthcare services”. See, e.g.,
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`Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002);
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`Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783,
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`1786 & 1787 (Fed. Cir. 1990); In re Uncle Sam Chemical Co., Inc., 229 USPQ 233 (TTAB
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`1986).
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`
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`The undisputed evidence is that both Petitioner and Respondent are offering services
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`under their marks that fall with home healthcare services. More specifically, in its
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`interrogatory responses, Respondent claims to offer services to health care facilities. See First
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`Response to Interrogatories 5(b) attached hereto as Exhibit 4. Respondent further claims to
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`offer services to “hospitals, long term care facilities, and individuals in need of temporary
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`nursing services or home health aides.” See Id. response to Interrogatory 24, emphasis
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`added. In its answer to the cancellation action, Respondent admitted paragraph 11 of the
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`Petition for Cancellation which states that Respondent uses its mark “to place health care
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`professionals in home health care and geriatric health care services for consumers.” See
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`Answer to Petition for Cancellation paragraph 11. On its website under the heading Services,
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`Respondent clearly states that when it refers to placement and employment it means the
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`provision of “Home Care Services” through the placement and employment of certified nursing
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`assistants, personal care aides and home health aides. See reproduction of web page attached
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`hereto as Exhibit 7. In short, the parties’ specific services are virtually identical and overlap
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`substantially. Both provide staff to care for the elderly or handicapped in their homes. In view
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`of this, there is no genuine issue of material fact that the goods and services are not related.
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`
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`Turning to channels of trade, the undisputed evidence also shows that both Respondent
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`and Petitioner offer their services to the elderly and disabled in connection with home health
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`care needs. Both Respondent’s own specimen and its website show that it provides home care
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`services. See Exhibits 3 and 7. Moreover, because there is no limitation in Respondent’s
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`description of goods and services as to the channels of trade or customers for the services, the
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`Board should deem the parties services to travel in the same channels of trade and to be sold to
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`the same classes of consumers. See Canadian Imperial Bank of Commerce v. Wells Fargo
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`Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); In re Riley Company, 182 USPQ
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`510 (TTAB 1974). Because the identifications in the registration describes services broadly,
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`and there is no limitation as to the nature, type, channels of trade or class of purchasers, it
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`should be presumed that the registration encompasses all services of the type described, that
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`they move in all channels of trade normal for these services, and that they are available to all
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`classes of purchasers for the described services. See In re Linkvest S.A., 24 USPQ2d 1716
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`(TTAB 1992).
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`
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`Both of the key du Pont factors at issue weigh heavily in favor of a finding of likelihood
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`of confusion.
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`
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`iii. Other Factors
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`While the bulk of the evidence before the Board pertains to the two key du Pont factors
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`analyzed above, consideration of the other factors does not create a factual issue precluding
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`summary judgment. There is no indication in the record that trial would produce additional or
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`different evidence on these points so as to change their weight in the balancing of the du Pont
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`factors. Nor is there any indication that Respondent could produce at trial any evidence on
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`other du Pont factors that would change the balance. See Kellogg v. Pack'em, 14 USPQ2d
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`1545.
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`
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`Although Petitioner has not offered evidence of actual confusion despite a period of
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`contemporaneous use, this does not raise a genuine issue precluding summary judgment. Of
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`course, Petitioner is not required to prove actual confusion in order to make out a prima facie
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`showing of likelihood of confusion. See Block Drug Co. v. Den-Mat, Inc., 17 USPQ2d 1315
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`(TTAB 1989); Airco, Inc. v. Air Equipment Rental Co., Inc., 210 USPQ 492 (TTAB 1980).
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`Moreover, while evidence of actual confusion may be some of the best evidence of likelihood
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`of confusion, the converse is not true, as evidence of actual confusion is difficult to obtain. See
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`Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir.
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`1983) (absence of significant evidence of actual confusion does not mean that there is no
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`likelihood of confusion); see also, Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774
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`(TTAB 1992). At best, this factor slightly favors Petitioner in the overall likelihood of
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`confusion analysis, and is buttressed by the strength of Petitioner’s case on the “key” factors of
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`similarity of the marks and similarity of the services. Similarly, any evidence that might be
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`offered by Respondent as to the existence of third-party use of similar marks would not
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`alleviate the strong likelihood of confusion that exists because of the use of highly similar
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`marks in connection with highly similar services, and therefore would not change the outcome
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`of the