estta tracking number: estta1024720 12/23/2019

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA1024720

Filing date: 12/23/2019

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 91248423

Party DefendantMichael A. Snavely

CorrespondenceAddress

ANTHONY M VERNA IIIVERNA LAW PC80 THEODORE FREMD DRRYE, NY 10580UNITED [email protected] phone number provided

Submission Other Motions/Papers

Filer's Name Anthony M. Verna III

Filer's email [email protected]

Signature /s Anthony M. Verna III s/

Date 12/23/2019

Attachments Response to Summary Judgment - Snavely.pdf(1506988 bytes )Snavely Declaration - Signed .pdf(90311 bytes )

http://estta.uspto.gov

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Response to Summary Judgment Motion – Snavely

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Green Medical Marketing LLC Plaintiff, vs. Michael A. Snavely Defendant

) ) ) ) ) ) ) ) ) ) )

Opposition No.: 91248423

RESPONSE TO MOTION FOR SUMMARY JUDGMENT AND CROSS-MOTION

FOR SUMMARY JUDGMENT

Michael A. Snavely (“Defendant” or “Applicant”), through his attorney, Anthony M. Verna III,

hereby responds to the Motion for Summary Judgment that Green Medical Marketing LLC

(“Plaintiff” or “Opposer”) filed previously and hereby files for a cross-motion for summary

judgment.

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Table of Contents

Table of Contents ..................................................................................................................................................................... 2

I. Summary Judgment Standard ................................................................................................................................... 4

II. Procedural issues. .......................................................................................................................................................... 5

III. Facts at Issue ............................................................................................................................................................... 5

IV. Applicant has been making medical referrals since 7. Opposer’s Application states April 4 for its goods/services. .............................................................................................................................................. 5

V. Likelihood of Confusion .............................................................................................................................................. 6

A. The Motion Should not be Sustained Because Applicant’s Mark Does not Create a Likelihood of Confusion. ............................................................................................................................................ 6

B. The Similarity or Dissimilarity and Nature of the Goods or Services as Described in an

Application or Registration or in Connection with Which a Prior Mark is in Use. ........................... 7

C. The similarity or dissimilarity of established, likely-to-continue trade channels. .................. 10

D. The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing. ......................................................................................................................... 10

E. The similarity or dissimilarity of the marks in their entireties as to appearance, sound,

connotation and commercial impression; .......................................................................................................... 12

F. No Evidence of Actual Confusion. ................................................................................................................. 14

G. Fame is not shown. .............................................................................................................................................. 15

VI. Conclusion .................................................................................................................................................................. 17

Cases

Adickes v. S. H. Kress & Co., 398 U.S. 144, 157 (1970) .............................................................................................. 5

Armbruster v. Unisys Corp., 32 F.3d 768, 777 (3d Cir. 1994).................................................................................... 5

Autobytel Inc. v. Auto By Rent, Inc., 2011 WL 3533294, TTAB No. 91180067 (TTAB 2011) .................... 17

Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002) ........... 16

Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) ................................... 5, 9

Citigroup Inc. v. Capital City Bank Group, 637 F.3d 1344 (Fed. Cir. 2011) .............................................. 11, 15

Continental Plastic Containers Inc. v. Owens Brockway Plastic Products, Inc., 141 F.3d 1073, 46

USPQ2d 1277 (Fed. Cir. 1998) ...................................................................................................................................... 12

Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1479 (TTAB 2014) ............... 15

Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000) .......................... 15

Dynamics Research Corp. v. Langenau Mfg. Co., 704 F.2d 1575, 217 USPQ 649 (Fed. Cir. 1983) .. 11, 12

Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1413 (TTAB 2010) ................................. 12

Elec. Water Conditioners, Inc. v. Turbomag Corp., 221 USPQ 162, 164 (TTAB 1984) ................................. 15

Electronic Design & Sales Inc. v. Electronic Data Systems Corp., [954 F.2d 713,] … 21 USPQ2d 1388 ([Fed. Cir.] 1992) ........................................................................................................................................................ 11, 12

H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1720-1721 (TTAB 2008) ............................................... 10

Hercules Inc. v. National Starch and Chemical Corp., 223 USPQ 1244, 1246 (TTAB 1984) ...................... 14

3


Hewlett-Packard Co. v. Human Performance Measurement Inc., 23 USPQ2d 1390 (TTAB 1991) ........... 12

In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) ...................... 7, 13

In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988) .................................................................................... 13

In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003) .............. 7

In re Oppedahl & Larson LLP, 373 F.3d 1171, 1174 (Fed. Cir. 2004) ................................................................. 13

In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) ................................................................................... 13

Intersteller Starship Serv. Ltd. v. Epix, Inc., 304 F.3d 936 (9th Cir. 2002) .......................................................... 12

Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir.

1992) ....................................................................................................................................................................................... 16

Lahoti v. Vericheck, Inc., 586 F.3d 1190 (9th Cir. 2009) ........................................................................................... 14

Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007) .................... 16

Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1831 (TTAB 2012) ....................... 17

Lloyd's Food Products, Inc. v. Eli's, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993) .............. 5

Marshall Field & Co. v. Mrs. Field's Cookies, 25 USPQ2d 1321, 1334 (TTAB 1992) ................................... 15

Morgan Creek Productions Inc. v. Foria International Inc., 91 USPQ2d 1134, 1138 (TTAB 2009) ......... 10

O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A., 2012 WL 893482, TTAB No. 91190886 (TTAB 2012) ..... 10

Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.

1990) ......................................................................................................................................................................................... 9

Olde Tyme Foods, Inc. v. Roundy's, Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992) ........................... 5

Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir.

1992) .................................................................................................................................................................................. 5, 18

Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, Opposition No. 91192046 73

USPQ2d 1689, 1692 (Fed. Cir. 2005) .......................................................................................................................... 14

Paramount International Export, Ltd. vs FoJo Beans, 2017 WL 2572834, TTAB No. 91222612 (TTAB

2017) ....................................................................................................................................................................................... 17

Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 489, 212 USPQ 246, 252 (1st

Cir. 1981) .............................................................................................................................................................................. 11

Posi Lock Puller, Inc. vs. Swenco Products, Inc., 2001 WL 1345042, TTAB No. 91108697 (TTAB 2001)

.................................................................................................................................................................................................... 9

Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) ................................. 14

Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1927

(TTAB 2011) ....................................................................................................................................................................... 10

Raytheon Co. v. Litton Business Systems, Inc., 169 USPQ 438 (TTAB 1971) .................................................... 12

RE/MAX International, Inc. v. Reteam Services, L.L.C., 2004 WL 101329, TTAB No. 91119995 (TTAB

2004) ....................................................................................................................................................................................... 10

Recot Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000) .................. 11, 16

Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1034-35 (TTAB 2010) ................................................. 10

San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, Opposition No.

91192046, 196 USPQ 1, 3 (CCPA 1977) ................................................................................................................... 13

Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975) ............................................................. 13

Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-

1086 (Fed. Cir. June 5, 1992) ......................................................................................................................................... 13

Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987) .................. 5

The B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir.

1988) ....................................................................................................................................................................................... 14

Toys “R” Us, Inc. v. Lamps R Us, 219 USPQ 340, 346 (TTAB 1983) ................................................................. 15

Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980) ............................ 13

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I. Summary Judgment Standard

A motion for summary judgment is a pretrial device intended to save the time and

expense of a full trial.

Summary judgment, however, is only appropriate when there is no genuine dispute as to

any material fact and the moving party is entitled to judgment as a matter of law. See Fed. R.

Civ. P. 56(a). The Board may not resolve disputes of material fact; it may only ascertain whether

a genuine dispute regarding a material fact exists. See Lloyd's Food Products, Inc. v. Eli's, Inc.,

987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Olde Tyme Foods, Inc. v. Roundy's, Inc.,

961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992); and Sweats Fashions Inc. v. Pannill Knitting

Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). Rule 56(c) mandates the entry of

summary judgment against a party “who fails to make a showing sufficient to establish the

existence of an element essential to that party's case and on which that party will bear the burden

of proof at trial.” Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265

(1986). In seeking summary judgment, the movant always has “the burden of showing the

absence of a genuine issue as to any material fact.” Adickes v. S. H. Kress & Co., 398 U.S. 144,

157 (1970).

The non-moving party is afforded the benefit of all reasonable inferences drawn from the

record. Armbruster v. Unisys Corp., 32 F.3d 768, 777 (3d Cir. 1994).

A factual dispute is genuine if, on the evidence of record, a reasonable fact finder could

resolve the matter in favor of the non-moving party. Opryland USA Inc. v. Great American

Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods,

Inc., 22 USPQ2d at 1544.

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In this case, at a minimum, a genuine dispute of material fact exists as to the relatedness

of the parties’ goods and services and summary judgment should be denied.

II. Procedural issues.

Counsel for Opposer never sent any letter about discovery deficiencies or filed a request

with the Board to alleviate any supposed discovery issues.

III. Facts at Issue

There are still a host of facts at issue in this case. For example:

1) Mr. Snavely has priority over the Opposer, even though the Opposer is making that claim

in its Motion for Summary Judgment.

2) Mr. Snavely is also the owner of DR. REEFER, U.S. Reg. No. 5837489 for

goods/services of “Medical referrals” with a first use date of December 21, 2011.

IV. Applicant has been making medical referrals since 2007. Opposer’s Application

states “April 2014” for its goods/services.

Applicant states in his application for DR. GREEN RELIEF, U.S. Serial No. 88003394

that he has been providing his medical referral services since 2007. The earliest date that the

Opposer can rely upon is April 2014 as declared and stated in the application for U.S. Serial No.

88244407. Opposer also only has evidence as early as 2016. See Exhibit 3 to Opposer’s Motion

for Summary Judgment.

See Decl. of Michael A. Snavely to this response motion and Exhibits A, B, and C to this

response, showing that Mr. Snavely contracted to provide services in 2012 under the DR.

GREEN RELIEF common-law trademark and paid for advertisements for Mr. Snavely’s medical

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referral services in 2012. See Exhibit D for the examples of the billboards that Mr. Snavely

advertised his medical services.

Also, despite any claims by the Opposer, the specimen of U.S. Serial No. 88003394 is a

true and accurate screenshot of the website of the Applicant at the time of filing the trademark

application.

This means that Applicant has priority over the Opposer, unlike any claim the Opposer

has made in its motion for summary judgment.

V. Likelihood of Confusion

One must first review the standard for a trademark to have a likelihood of confusion with

another mark. In this case, Applicant believes that its goods/services are related to the Opposer’s

goods/services, as defined in their applications.

The Board’s determination under Section 2(d) is based on an analysis of all of the

probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of

confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA

1973); see also In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203

(Fed. Cir. 2003).

A. The Motion Should not be Sustained Because Applicant’s Mark Does not Create a

Likelihood of Confusion.

The list of the duPont factors are:

1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression;

2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.

3.) The similarity or dissimilarity of established, likely-to-continue trade channels.

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4) The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing.

5) The fame of the prior mark 6) The number and nature of similar marks in use on similar goods 7) The nature and extent of any actual confusion. 8) The length of time during and conditions under which there has

been concurrent use without evidence of actual confusion. 9) The variety of goods on which a mark is or is not used (house

mark, “family” mark, product mark). 10) The market interface between applicant and the owner of a prior

mark. 11) The extent to which applicant has a right to exclude others from

use of its mark on its goods 12) The extent of potential confusion, i.e., whether de minimis or

substantial

The goods/services that the parties sell are exactly the same, “Medical referrals” as

defined in the applications for both parties. With priority, this means that Applicant is entitled to

his application turning to registration.

B. The Similarity or Dissimilarity and Nature of the Goods or Services as Described in

an Application or Registration or in Connection with Which a Prior Mark is in Use.

Applicant Snavely applied for DR. GREEN RELIEF U.S. Serial No. 88003394 on June

16, 2018. Applicant’s goods/services are listed as “Medical referrals” in International Class 35.

Applicant and Applicant’s predecessor-in-interest have been using the mark since 2007.

See Snavely Decl. ¶¶1-8. Also see the application for 88003394. Also see Exhibits A-D.

As discussed, Opposer’s services are “Advertising, marketing and promotion services;

Medical referrals; Organizational services for business purposes, namely, organizing physician

schedules and patient intake information; Providing consumer information in the field of medical

marijuana and state programs regarding medical marijuana” in Class 35.

The authority is legion that the question of registrability of an applicant's mark must be

decided on the basis of the identification of goods set forth in the application regardless of what

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the record may reveal as to the particular nature of an applicant's goods, the particular channels

of trade or the class of purchasers to which sales of the goods are directed. Octocom Syst. Inc. v.

Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).

Looking at the goods/services at issue, both parties have “Medical referrals.”

A party asserting that a material fact cannot be genuinely disputed may support its

assertion by either citing to particular materials in the record or by showing that an adverse party

cannot produce admissible evidence to support a countervailing fact. Fed. R. Civ. P. 56(c). See

also Celotex Corp. v. Catrett, 477 U.S. at 325 (when party moving for summary judgment does

not bear the ultimate burden of proof on an issue, moving party may satisfy its initial burden as

movant “by ‘showing’ -- that is, pointing out to the [Board] -- that there is an absence of

evidence to support the nonmoving party's case.”).

In this particular situation, there are lots of types of evidence that the Applicant has

produced, such as contracts for advertising and contracts for using the mark at issue.

The fact is that the Applicant has use of the mark since 2007 and has evidence of use before

the Opposer and in the same goods/services set.

Opposer is claiming common-law use and registered use of its various trademarks. For

example, in Posi Lock Puller, Inc. vs. Swenco Products, Inc., 2001 WL 1345042, TTAB No.

91108697 (TTAB 2001), the Board refused to hear arguments about common-law trademarks

when not pleaded properly. “While we have considered opposer's distribution services to aid our

determination of how much weight to give to the evidence of actual confusion, opposer has not

pleaded any registration or common law rights in a mark for such services, and opposer based its

opposition solely on its ownership of a registration for hand-operated gear and bearing pullers.

Nor was it tried by the express or implied consent of the parties. Therefore, the question of

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likelihood of confusion between applicant's goods and opposer's distributorship services is not

before us.” Whenever common-law is not pleaded, but argued, the Board deems the pleadings to

be amended to conform to the evidence. Fed. R. Cir. P. 15(b). That is not the case here, as those

issues cannot be argued since common-law was not pleaded properly. See RE/MAX

International, Inc. v. Reteam Services, L.L.C., 2004 WL 101329, TTAB No. 91119995 (TTAB

2004). Also see O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A., 2012 WL 893482, TTAB No.

91190886 (TTAB 2012), in which the Board also refused to hear the common-law issues that

were not pleaded. Implied consent to the trial of an unpleaded issue can be found only where the

nonoffering party (1) raised no objection to the introduction of the evidence on the issue, and (2)

was fairly apprised that the evidence was being offered in support of the issue. Morgan Creek

Productions Inc. v. Foria International Inc., 91 USPQ2d 1134, 1138 (TTAB 2009); H.D. Lee

Co. v. Maidenform Inc., 87 USPQ2d 1715, 1720-1721 (TTAB 2008). Also See Productos

Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1927 (TTAB

2011), on appeal, No. 1:11-cv-01623-RC (D.D.C.); Safer Inc. v. OMS Investments Inc., 94

USPQ2d 1031, 1034-35 (TTAB 2010). Applicant objects to all the evidence for common-law

use of the Opposer’s marks, as that use was not pleaded. That leaves the Board to view the

Opposer’s applications only, not its common-law use.

Here, the Opposer just makes assumptions and conclusions without much fact. That must

mean that the parties do not agree as to the relatedness of the goods/services.

In fact, despite the claims of the Opposer, there is zero evidence of the similarities

of the parties’ goods/services, let alone of the parties agreeing on those similarities, as is

required in a motion for summary judgment.

10


C. The similarity or dissimilarity of established, likely-to-continue trade channels.

There is no agreement between the parties as to the trade channels of the goods/services of

the parties. See Citigroup Inc. v. Capital City Bank Group, 637 F.3d 1344 (Fed. Cir. 2011), where

the Court found that the goods travel through the same trade channels, but still did not cause a

likelihood of confusion. “[M]echanically tallying the duPont factors addressed is improper, as the

factors have differing weights.” Id. at 1356.

In this particular case, Opposer sells medical referral services. Opposer sells the same.

And for that, the only conclusion that can be made is that the parties have the same

channels of trade for its different products. Again, with Applicant having priority, the Applicant

must keep his application and proceed to registration.

D. The conditions under which and buyers to whom sales are made, i.e., “impulse” vs.

careful, sophisticated purchasing.

“When the products are relatively low-priced and subject to impulse buying, the risk of

likelihood of confusion is increased because purchasers of such products are held to a lesser

standard of purchasing care.” Recot Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894,

1899 (Fed. Cir. 2000). The likelihood of confusion is less probable where the goods are

expensive and purchased after careful consideration. See Electronic Design & Sales Inc. v.

Electronic Data Systems Corp., [954 F.2d 713,] … 21 USPQ2d 1388 ([Fed. Cir.] 1992),

Dynamics Research Corp. v. Langenau Mfg. Co., 704 F.2d 1575, 217 USPQ 649 (Fed. Cir.

1983), and Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 489, 212

USPQ 246, 252 (1st Cir. 1981).

11


“If a rogue company adopts as its domain name a protected trademark and proceeds to

sell goods similar to those offered by the trademark owner, it necessarily free rides on the

trademark owner's goodwill, and that rogue company benefits from increasing initial interest

confusion as consumers exercise lower levels of care in making their purchasing decisions.”

Intersteller Starship Serv. Ltd. v. Epix, Inc., 304 F.3d 936 (9th Cir. 2002) at 945.

The complexity of the products means that study and negotiation is required. Cf.

Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1413 (TTAB 2010) (products

cost $14,000 and $47,000 respectively and testimony established that purchases of both products

involve significant study and negotiation).

What the Opposer has not done is delve into the goods and services that the Opposer

itself sells. Sales to industrial and business customers are the culmination of relatively long and

detailed negotiations with direct, personal communications between buyer and seller. By the time

a sale is consummated, the purchaser will know what it is purchasing, why it is purchasing the

particular system, and certainly from whom it is purchasing the system. The condition of sale

and sophistication of purchasers are significant factors in Applicant's favor. See: Electronic

Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed.

Cir. 1992) [“[T]here is always less likelihood of confusion where goods are expensive and

purchased after careful consideration.” [citation omitted]]. See also: Continental Plastic

Containers Inc. v. Owens Brockway Plastic Products, Inc., 141 F.3d 1073, 46 USPQ2d 1277

(Fed. Cir. 1998); Dynamics Research Corp. v. Langenau Mfg. Co., 704 F.2d 1575, 217 USPQ

649 (Fed. Cir. 1983); Hewlett-Packard Co. v. Human Performance Measurement Inc., 23

USPQ2d 1390 (TTAB 1991); and Raytheon Co. v. Litton Business Systems, Inc., 169 USPQ 438

(TTAB 1971).

12


E. The similarity or dissimilarity of the marks in their entireties as to appearance,

sound, connotation and commercial impression;

Turning to the similarity or dissimilarity of the marks in their entireties as to appearance,

sound, connotation and commercial impression is of utmost importance. In re E. I. du Pont De

Nemours & Co., 177 USPQ at 567. In a particular case, any one of these means of comparison

may be critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535

(TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988). In comparing the

marks, we are mindful that the test is not whether the marks can be distinguished when subjected

to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of

their overall commercial impression so that confusion as to the source of the goods offered under

the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics

Components Corp., 565 F.2d 683, Opposition No. 91192046, 196 USPQ 1, 3 (CCPA 1977);

Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ 1735, 1741 (TTAB 1991), aff’d

unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the

average customer, who retains a general rather than specific impression of the marks.

Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed

Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).

“[C]ourts may analyze all components of the mark in determining whether those parts,

taken together, merely describe the goods or services offered.” In re Oppedahl & Larson LLP,

373 F.3d 1171, 1174 (Fed. Cir. 2004) (‘In considering a mark as a whole, the [Trademark Trial

and Appeal] Board may weigh the individual components of the mark to determine the overall

13


impression or the descriptiveness of the mark and its various components.’).” Lahoti v.

Vericheck, Inc., 586 F.3d 1190 (9th Cir. 2009).

The marks of the parties must be taken in all components. Considering the visual

appearance of the marks in their entireties, as well as the significance of the ending part of the

marks to differentiate, in making an impression with consumers, the marks look different.

This only matters when the dominant portion is more than a descriptive portion of the

trademark. See and compare to Hercules Inc. v. National Starch and Chemical Corp., 223

USPQ 1244, 1246 (TTAB 1984) (“considering the marks NATROL and NATROSOL in their

entireties, the clearly dominant aspect of both marks is that the first four letters and the final two

are the same”). See also Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897

(TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the

mind of a purchaser and remembered”); see also Palm Bay Imports Inc. v. Veuve Clicquot

Ponsardin, 396 F.3d 1369, Opposition No. 91192046 73 USPQ2d 1689, 1692 (Fed. Cir. 2005)

(“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the

first word in the mark and the first word to appear on the label); Century 21 Real Estate Corp. v.

Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon

encountering the marks, consumers must first notice the identical lead word).

Although noting that a side-by-side comparison is not the proper test for comparing

marks, opposer, in fact, engaged in side-by-side comparison to highlight the arguable visual

similarities in the marks. However, the purchasing public does not indulge in such recognitional

contortions as a side-by-side comparison, but sees things as they are. The B.V.D. Licensing

Corp. v. Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir. 1988).

Here, the marks are exactly the same and Applicant has priority over Opposer.

14


F. No Evidence of Actual Confusion.

The Opposer has offered no evidence of actual confusion. Considering that the

Applicant’s marks have been in use for quite some time, the Opposer does need to show some

actual confusion. An absence of any instances of actual confusion may be a meaningful

component in a likelihood of confusion analysis if “the record indicates appreciable and

continuous use by applicant of its mark for a significant period of time in the same markets as

those served by opposer under its marks.” See Citigroup Inc. v. Capital City Bank Group Inc., 94

USPQ2d 1645, 1660 (TTAB 2010), aff'd, 98 USPQ2d 1253 (Fed. Cir. 2011). Also see

Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); Nike

Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1201, 1202 (TTAB 2007). Even if there were

inquiries (which Opposer does not allege), it would not be evidence of confusion. An inquiry

regarding whether there is a relationship between the parties, is not evidence of confusion. See

Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1479 (TTAB 2014)

(inquiry is not evidence of confusion because the inquiry indicates that the prospective customer

had a reason to suspect that there were two different companies); Marshall Field & Co. v. Mrs.

Field's Cookies, 25 USPQ2d 1321, 1334 (TTAB 1992) (inquiries indicate that the declarants

were aware that there may be two different entities); Elec. Water Conditioners, Inc. v. Turbomag

Corp., 221 USPQ 162, 164 (TTAB 1984) (“That questions have been raised as the relationship

between firms is not evidence of actual confusion of their trademarks.”); Toys “R” Us, Inc. v.

Lamps R Us, 219 USPQ 340, 346 (TTAB 1983) (“The fact that questions have been raised as the

possible relationship between firms is not by itself evidence of actual confusion of their marks.”).

The summary judgment record therefore contains no evidence of actual confusion.

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G. Fame is not shown.

Fame, if it exists, plays a dominant role in the likelihood of confusion analysis because

famous marks enjoy a broad scope of protection or exclusivity of use. A famous mark has

extensive public recognition and renown. Bose Corp. v. QSC Audio Products Inc., 293 F.3d

1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54

USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963

F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).

Fame may be measured indirectly by the volume of sales and advertising expenditures of

the goods and services identified by the marks at issue, “by the length of time those indicia of

commercial awareness have been evident,” widespread critical assessments and through notice

by independent sources of the products identified by the marks, as well as the general reputation

of the products and services. Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1305-1306

and 1309. Although raw numbers of product sales and advertising expenses may have sufficed

in the past to prove fame of a mark, raw numbers alone may be misleading. Some context in

which to place raw statistics may be necessary (e.g., the substantiality of the sales or advertising

figures for comparable types of products or services). Bose Corp. v. QSC Audio Products Inc.,

63 USPQ2d at 1309.

Finally, because of the extreme deference that we accord a famous mark in terms of the

wide latitude of legal protection it receives, and the dominant role fame plays in the likelihood of

confusion analysis, it is the duty of the party asserting that its mark is famous to clearly prove it.

Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).

No evidence of fame exists.

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Autobytel Inc. v. Auto By Rent, Inc., 2011 WL 3533294, TTAB No. 91180067 (TTAB

2011) is a good analogy. “There are two problems with the various evidence of fame offered by

opposer.6 First, much of the “fame” is based on sales and revenue from its website, or websites.

It is unclear how much fame would be attributed to any particular mark. Second, and more

importantly, the vast bulk of evidence of fame is over a decade old, relating back to when the

concept of an online car dealership referral service was new and newsworthy. One might draw

the inference from the evidence offered by opposer that since the late-1990s, the media has not

been covering opposer's business and services in the news nearly to the extent of the early

heyday. With this record, and given the heavy burden of proving fame, we cannot find that

opposer has satisfied that burden.”

Paramount International Export, Ltd. vs FoJo Beans, 2017 WL 2572834, TTAB No.

91222612 (TTAB 2017) is another good analogy. “We acknowledge some deficiencies in

Opposer's evidence of fame. For example, there is no evidence regarding the circulation figures

for the various publications cited, or attendance/viewing figures for the movies or television

shows in which Opposer's products have appeared. Furthermore, it is unclear how Opposer

defines “premium” bottled water brands, how many products fit in that category or even what

being “number one” in that category means with respect to the bottled water market as a whole.

See Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1831 (TTAB 2012)

(“We have no context for opposer's advertising and sales figures, such as how the figures for

[FIJI water] compare with ... other brands of” bottled water); see also, Bose, 63 USPQ2d at 1309

(“some context in which to place raw statistics is reasonable”). It is unclear how many people

have been exposed to Opposer's mark or products at award shows or how its number of

Facebook likes compares to the social media success of Opposer's competitors.”

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In this case, the evidence is not complete. There are sales. But those sales do not related

to one mark in particular or if it is all marks or if it is some set of marks.

VI. Conclusion

The standard for a motion for summary judgment is that a party is entitled to summary

judgment when it has demonstrated that there are no genuine issues as to any material facts, and

that it is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c). The evidence must be

viewed in a light favorable to the nonmoving party, and all justifiable inferences are to be drawn

in the nonmovant's favor. Opryland USA Inc. v. The Great American Music Show, Inc., 970 F.2d

847, 23 USPQ2d 1471 (Fed. Cir. 1992).

In looking at the evidence that is viewed in a light favorable to the nonmoving party, the

Applicant here, the Board must deny summary judgment to the Opposer because the Applicant

has priority over Opposer. If anything, summary judgment to the Applicant is proper because

the goods/services are the same. The marks are the same. The Applicant has priority, thought.

Respectfully submitted,

Dated: December 23, 2019

/s Anthony M. Verna III

Anthony M. Verna III, Esq. Verna Law, P.C. 80 Theodore Fremd Ave. Rye, NY 10580

18


IN THE TRADEMARK TRIAL AND APPEAL BOARD Green Medical Marketing LLC Plaintiff, vs. Michael A. Snavely Defendant

) ) ) ) ) ) ) ) ) ) )


CERTIFICATE OF SERVICE

The undersigned hereby certifies that on this 23rd day of December 2019, a copy of the foregoing

response was served via e-mail on the following:

Mark Borghese Borghese Legal Ltd.

10161 Park Run Drive, Suite 150 Las Vegas, NV 89145

[email protected], [email protected] Respectfully submitted,

Dated this July 8, 2019

/s Anthony M. Verna III Anthony M. Verna III, Esq. Verna Law, P.C. 80 Theodore Fremd Ave. Rye, NY 10580

19


EXHIBIT A Contract to market services under DR GREEN RELIEF common-law trademark.

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EXHIBIT B Invoice for services provided and marketed for in 2012 under DR GREEN RELIEF.

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EXHIBIT C

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EXHIBIT D Actual photographs of DR GREEN RELIEF in use on billboards.

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Declaration of Michael A. Snavely 1

IN THE UNTIED STATES PATENT AND TRADEMARK OFFICE

TRADEMARK TRIAL AND APPEAL BOARD

Green Medical Marketing LLC Plaintiff, vs. Michael A. Snavely Defendant

) ) ) ) ) ) ) ) ) ) )


I, Michael A. Snavely, state as follows:

1. I am over the age of 18 years, have personal knowledge of the facts stated herein,

and am competent to be a witness.

2. I have in the medical marijuana industry since 2001.

3. Medical marijuana use was legalized by ballot initiative in 2000 in Nevada.

4. In 2007, I started my medical referral services by advertising on Craigslist using the

DR. GREEN RELIEF trademark.

5. In 2012, I contracted with New Edge Health, Inc. to provide medical referrals under

the DR. GREEN RELIEF name, keeping the rights in the name. (See Exhibit A to the Response to

the Motion for Summary Judgment.)

6. In 2012, I also contracted with Rancho Allen LLC to pay for billboards advertising

medical referrals under the DR. GREEN RELIEF trademark. See Exhibit D to the Response to the

Motion for Summary Judgment.

7. I also own DR. REEFER, U.S. Registration No. 5837489, for goods/services of

“Medical referrals” in International Class 35.

estta tracking number: estta1024720 12/23/2019

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