Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA494031
`ESTTA Tracking number:
`09/12/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous
`extension
`Address
`
`MedExcel U.S.A., Inc.
`09/29/2012
`
`484 Temple Hill Road
`New Windsor, NY 12553
`UNITED STATES
`
`Attorney
`information
`
`Frank P. Presta
`Nixon & Vanderhye PC
`901 North Glebe Road 11th Floor
`Arlington, VA 22203
`UNITED STATES
`fpp@nixonvan.com, cgp@nixonvan.com, mec@nixonvan.com
`Phone:703-816-4041
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85557093
`09/12/2012
`
`Publication date
`Opposition
`Period Ends
`
`07/31/2012
`09/29/2012
`
`Medxcel, LLC
`Suite 490 6325 Digital Way
`Indianapolis, IN 46278
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 2012/01/19 First Use In Commerce: 2012/02/23
`All goods and services in the class are opposed, namely: Holding company services, namely,
`providing business management and business administration services, and consolidating shared
`services, namely, office functions and human resources for subsidiaries and affiliates which provide
`products and services in the healthcare field; business incubation services in the nature of developing
`new business concepts and start-up businesses and business development services, namely,
`business advisory services, business consultancy and business information to businesses in the field
`of healthcare
`
`Grounds for Opposition
`
`Deceptiveness
`False suggestion of a connection
`Priority and likelihood of confusion
`
`Trademark Act section 2(a)
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`
`ESTTA494031
`ESTTA Tracking number:
`09/12/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous
`extension
`Address
`
`MedExcel U.S.A., Inc.
`09/29/2012
`
`484 Temple Hill Road
`New Windsor, NY 12553
`UNITED STATES
`
`Attorney
`information
`
`Frank P. Presta
`Nixon & Vanderhye PC
`901 North Glebe Road 11th Floor
`Arlington, VA 22203
`UNITED STATES
`fpp@nixonvan.com, cgp@nixonvan.com, mec@nixonvan.com
`Phone:703-816-4041
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85557093
`09/12/2012
`
`Publication date
`Opposition
`Period Ends
`
`07/31/2012
`09/29/2012
`
`Medxcel, LLC
`Suite 490 6325 Digital Way
`Indianapolis, IN 46278
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 2012/01/19 First Use In Commerce: 2012/02/23
`All goods and services in the class are opposed, namely: Holding company services, namely,
`providing business management and business administration services, and consolidating shared
`services, namely, office functions and human resources for subsidiaries and affiliates which provide
`products and services in the healthcare field; business incubation services in the nature of developing
`new business concepts and start-up businesses and business development services, namely,
`business advisory services, business consultancy and business information to businesses in the field
`of healthcare
`
`Grounds for Opposition
`
`Deceptiveness
`False suggestion of a connection
`Priority and likelihood of confusion
`
`Trademark Act section 2(a)
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`MedExcel (word mark)
`hospital management services relating to emergency care and
`primary care
`
`Attachments
`
`3359-12noticeopposition9-12-2012.pdf ( 5 pages )(184611 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/fpp/
`Frank P. Presta
`09/12/2012
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`3359-12
`
`In the matter of Application Serial No. 85/557093
`Published in the Official Gazette on July 31, 2012
`
`) )
`
`MEDEXCEL U.S.A., INC.
`
`Opposer,
`
`)
`) Opposition No.
`
`) )
`
`) )
`
`)
`
`V-
`
`MEDXCEL, LLC
`
`Applicant.
`
`Box TTAB FEE (or NO FEE)
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Arlington, Virginia 22313-1451
`
`NOTICE OF OPPOSITION
`
`MedExcel U.S.A., lnc., a New York corporation, with a place of business at 484
`
`Temple Hill Road, New Windsor, New York, 12553, believes that it will be damaged by
`
`the registration of the mark Medxcel and Design (hereinafter after “Applicant's Mark”) for
`
`the services in Class 35 in Application Serial No. 85/557093, and hereby opposes the
`
`same.
`
`As grounds for opposition, it is alleged that:
`
`1.
`
`Application Serial No. 85/557093 was filed on March 1, 2012, to
`
`register Applicant’s Mark based on use in commerce with a date of first use of
`
`January 19, 2012, and a date of first use in commerce of February 23, 2012 for
`
`the following services in Class 35:
`
`2046393
`
`
`
`Holding company services, namely, providing business management and
`
`business administration services, and consolidating shared services, namely,
`
`office functions and human resources for subsidiaries and affiliates which provide
`
`products and services in the healthcare field; business incubation services in the
`
`nature of developing new business concepts and start-up businesses and
`
`business development services, namely, business advisory services, business
`
`consultancy and business information to businesses in the field of healthcare.
`
`2.
`
`On information and belief, Applicant has not used Applicant’s Mark
`
`in commerce on any of the services in International Class 35 prior to the date of
`
`first use of January 19, 2012.’
`
`3.
`
`Opposer was the owner of Registration No. 2203212, dated
`
`November 10, 1998, for the mark MedExcel for hospital management services
`
`relating to emergency care and primary care. This registration was cancelled as
`
`a result of Opposer’s inadvertent failure to file a timely declaration of use/renewal
`
`application.
`
`4.
`
`Opposer filed new application Serial No. 85/726074 on
`
`September 11, 2012 to re—register its mark MedExcel for hospital management
`
`services relating to emergency care and primary care based on a date of first use
`
`in commerce of December 1, 1996.
`
`5.
`
`Opposer’s mark MedExcel has been used in commerce by
`
`Opposer and its predecessor in interest continuously from at least as early as
`
`December 1, 1996 on and in connection with hospital management services
`
`relating to emergency care and primary care.
`
`2046393
`
`
`
`6.
`
`By virtue of the marketing and providing of services under
`
`Opposer’s mark MedExcel in commerce, the services with which Opposer’s mark
`
`have been and are being used have acquired a favorable reputation reflected in
`
`a substantial amount of goodwill which will be severely impaired by the
`
`registration of Applicant’s Mark for the services in Application Serial No.
`
`85/557093.
`
`7.
`
`Applicant’s Mark Medxcel and Design is so similar to Opposer’s
`
`mark MedExcel, when used in connection with the same or closely related
`
`services, eg, management and business administration services in the field of
`
`healthcare, as to be very likely to cause confusion, mistake or lead to deception
`
`as to the source or origin of Applicant’s services when provided under Applicant’s
`
`Mark.
`
`8.
`
`Applicant’s services in the opposed Application Serial No.
`
`85/557093 are the same as or very closely related to the services with which
`
`Opposer uses its mark MedExcel, and are provided and advertised through the
`
`same channels of trade and to the same classes of purchasers. Accordingly,
`
`confusion, mistake or deception are most likely, and many persons familiar with
`
`Opposer’s mark MedExcel are likely to use Applicant’s services under Applicant’s
`
`Mark in the belief that the latter are services provided or authorized by Opposer.
`
`9.
`
`Applicant’s use of Applicant’s Mark in connection with the services
`
`in the opposed Application Serial No. 85/557093 falsely suggests a connection
`
`with Opposer within the meaning of Section 2(a) of the Trademark Act, 15 U.S.C.
`
`1052(a).
`
`2046393
`
`
`
`10.
`
`The registration of Applicant’s Mark, therefore, for the services in
`
`the opposed Application Serial No. 85/557093 will be a source of damage and
`
`injury to Opposer and to its customers who have traded with Opposer based on
`
`reliance on Opposer’s mark MedExcel.
`
`WHEREFORE, Opposer prays that this opposition be sustained and that
`
`registration of the mark Medxcel and design for the services in Application Serial
`
`No. 85/557093 be refused to Applicant.
`
`The opposition fee of $30000 is submitted herewith.
`
`Respectfully submitted,
`
`MEDEXCEL U.S.A., INC.
`
`
`
`:5 "
`
`g_
`
`
`
`Frank P. Presta
`
`Attorney for Opposer
`Nixon & Vanderhye PC
`901 North Glebe Road, 11th Floor
`Arlington, VA 22203—1808
`Telephone: (703) 816-4000
`Facsimile: (703)816-4100
`
`2046393
`
`Date:
`
`
`
`By:
`
`FPP:cgp
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of this NOTICE OF OPPOSITION was served by
`
`first-class mail, postage prepaid, on Applicant’s Attorney of Record, Katie J.
`
`Miller at the Hall Render Killian Heath and Lyman, PC firm, 1 American Sq.,
`
`Suite 2000, Indianapolis, IN 46282-0004 on this
`
`/flfi. day of September,
`
`2012.
`
`
`
`
`ank'P. ra
`
`2046393
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