Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA623721
`ESTTA Tracking number:
`08/27/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91216882
`Defendant
`Audax Health Solutions, Inc.
`Norm J. Rich
`FOLEY & LARDNER LLP
`Sixth Floor 3000 K Street, N.W.
`WASHINGTON, DC 20007-5109
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`blazar@seyfarth.com, chiipdocket@seyfarth.com
`Answer
`Bart A. Lazar
`blazar@seyfarth.com
`/Bart A. Lazar/
`08/27/2014
`AUDAX.pdf(78003 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`101 HUNTINGTON HOLDINGS LLC,
`
`Opposer,
`
`v.
`
`AUDAX HEALTH SOLUTIONS, INC.,
`
`Applicant.
`
`Opposition No. 91216882
`Serial Nos. 85/946,266
`Mark: AUDAX
`Filing Date: May 30, 2013
`Publication Date: May 20, 2014
`
`ANSWER TO OPPOSITION
`
`Audax Health Solutions, Inc. (“Applicant”) by and through its attorneys Seyfarth Shaw
`
`LLP hereby responds to 101 Huntington Holdings LLC’s (“Opposer”) Notice of Opposition and
`
`states as follows:
`
`OPPOSITION NO. 1:
`
`Commencing long prior to Applicant’s filing date, Opposer and Opposer’s licensee,
`Audax Management Company, have engaged and are now engaged in the business of providing
`fund investment services, including private equity investment services, mezzanine investment
`services, senior debt investment services, and separate account advising, in interstate commerce.
`Opposer and its licensee also provide consulting and management services to many of those
`companies in which they invest, including in the healthcare industry.
`
`RESPONSE TO NO. 1:
`
`Applicant lacks information sufficient to admit or deny the allegations contained in this
`
`paragraph.
`
`OPPOSITION NO. 2:
`
`Commencing long prior to Applicant’s filing date, Opposer and its licensee have
`extensively used and are now using Opposer’s AUDAX, AUDAX GROUP, AUDAX
`MEZZANINE, AUDAX CREDIT OPPORTUNITIES, AUDAX PRIVATE EQUITY, and
`AUDAX SENIOR DEBT trademarks (hereinafter referred to as Opposer’s Audax Marks) in
`connection with a range of services offered by Opposer and its licensee in commerce.
`
`17801656v.3
`
`

`
`RESPONSE TO NO. 2:
`
`Applicant lacks information sufficient to admit or deny the allegations contained in this
`
`paragraph.
`
`OPPOSITION NO. 3:
`
`Opposer is owner of, and will rely herein, upon the following U.S. Trademark
`Registrations:
`
`Mark
`
`Registration No.
`
`Issue Date
`
`Goods
`
`AUDAX
`
`2,456,210
`
`May 29, 2001
`
`Fund investment
`services
`
`2,675,924
`
`January 21, 2003
`
`Mutual fund
`investment
`services
`
`3,566,664
`
`January 27, 2009
`
`Fund investment
`services
`
`17801656v.3
`
`-2-
`
`

`
`Mark
`
`Registration No.
`
`Issue Date
`
`Goods
`
`3,778,593
`
`April 20, 2010
`
`Fund investment
`services
`
`4,504,709
`
`April 1, 2014
`
`Fund investment
`services
`
`4,504,708
`
`April 1, 2014
`
`Fund investment
`services
`
`Registration of Opposer’s Audax Marks is valid, subsisting, and conclusive evidence of
`Opposer’s exclusive right to use Opposer’s Audax Marks in commerce on the services specified
`in said registrations.
`
`RESPONSE TO NO. 3:
`
`Applicant admits that these registrations are subsisting. Applicant lacks information
`
`sufficient to admit or deny the remaining allegations contained in this paragraph.
`
`17801656v.3
`
`-3-
`
`

`
`OPPOSITION NO. 4:
`
`In addition to Opposer’s U.S. Trademark Registrations listed above, Opposer shall rely
`herein upon its and its licensee’s common law usage of the Opposer’s Audax Marks. Opposer’s
`Audax Marks and associated common law usage comprise a valuable family of trademarks, all
`incorporating the distinctive AUDAX name.
`
`RESPONSE TO NO. 4:
`
`Applicant lacks information sufficient to admit or deny the allegations contained in this
`
`paragraph.
`
`OPPOSITION NO. 5:
`
`Owing to their continuous use for as much as 14 years in connection with fund
`investment and related consulting and management services, Opposer’s Audax Marks are
`distinctive in the United States as used with such services, including in the healthcare industry.
`Opposer and its licensee have invested in, consulted for, and provided management services
`under the AUDAX name, either presently or in the past, to the following healthcare companies:
`
`• Advanced Dermatology: Advanced Dermatology & Cosmetic Surgery is a
`dermatology-focused physician practice management company, with 53
`dermatology clinics in Florida and Ohio providing clinical, cosmetic, and
`pathology services.
`
`• Chesapeake IRB: Chesapeake IRB is a leading provider of independent
`institutional review board (“IRB”) services to major pharmaceutical, biotech
`and medical device companies, universities, academic medical centers, and
`hospital systems. Chesapeake performs independent reviews of proposed
`research projects and principal investigators to assure the protection and
`welfare of human subjects in clinical trials.
`
`• Correct Care Solutions: Correct Care Solutions is a comprehensive healthcare
`solutions provider to local, county, and state correctional facilities. CCS
`provides daily healthcare to over 65,000 patients in correctional facilities
`throughout 21 states.
`
`• Denver Biomedical: Denver Biomedical is a manufacturer, distributor, and
`marketer of medical devices for fluid management in the chest and abdomen.
`The company’s products include the Denver Shunt, the Pleurx pleural catheter
`system, and the ascites catheter system.
`
`• Great Expressions Dental Centers: Great Expressions Dental Centers is a
`dental practice management company providing professional corporations
`general and specialty services including endodontics, orthodontics, oral
`surgery, pedodontics, and periodontics.
`
`17801656v.3
`
`-4-
`
`

`
`•
`
`Injured Workers Pharmacy: Injured Workers Pharmacy is a specialty mail
`order pharmacy focused on injured workers who qualify for workers
`compensation. As an advocate for those who have been injured, Injured
`Workers Pharmacy takes the financial burden out of the medication process
`by shipping medications directly to the patient and collecting payment from
`the insurance company.
`
`• Laborie Medical Technologies: Laborie Medical Technologies is a leading
`global provider of urodynamic testing equipment and consumables for urinary
`incontinence.
`Laborie supplies physician offices, hospitals, and mobile
`providers on six continents.
`
`• LASIK Vision Institute: The LASIK Vision Institute is a leading provider of
`affordable laser vision correction services.
`Procedures offered include
`standard LASIK, custom LASIK, and photorefractive keratotomy (PRK). The
`company operates 50 centers in 28 states across the U.S. and it performed
`over 47,000 procedures in 2013.
`
`• Northern Digital: Northern Digital is a developer and manufacturer of optical
`and electromagnetic technology for image-guided surgical, industrial test and
`measurement, and research applications.
`
`• Numotion: Numotion is a national supplier of complex rehabilitation
`equipment and assistive technologies with over 130 locations across the
`United States. Numotion provides mobility and seating solutions including
`power wheelchairs, manual and lightweight wheelchairs, adaptive seating, and
`related rehabilitative equipment.
`
`• Reed Group: Reed Group is a provider of proprietary, evidence-based return-
`to-work guidelines and outsourced absence and clinical case management
`services that assist
`in the reduction of disability and absence costs for
`employers.
`
`• Trident USA: Trident USA is the leading national provider of bedside
`diagnostics services offering mobile x-ray, ultrasound,
`teleradiology and
`laboratory services to skilled nursing home, assisted living, home healthcare,
`hospice and correctional markets.
`
`RESPONSE TO NO. 5:
`
`Applicant lacks information sufficient to admit or deny the allegations contained in this
`
`paragraph.
`
`17801656v.3
`
`-5-
`
`

`
`OPPOSITION NO. 6:
`
`Opposer’s Audax Marks became distinctive well prior to the filing of Applicant’s
`application and well prior to Applicant’s actual use or intended use of the “Audax” name.
`Opposer and its above-identified licensee have made a substantial investment in advertising and
`promoting their services under Opposer’s Audax Marks since their initial use as early as 1999.
`Opposer and its licensee have extensively used, advertised, promoted, and offered Opposer’s
`services bearing Opposer’s Audax Marks to the public through various channels of trade and
`various media in commerce with the result that Opposer’s customers and the public in general
`have come to know and recognize Opposer’s Audax Marks and associate the same with Opposer
`and/or services rendered by Opposer and/or its licensee.
`
`RESPONSE TO NO. 6:
`
`Applicant lacks information sufficient to admit or deny the allegations contained in this
`
`paragraph.
`
`OPPOSITION NO. 7:
`
`Upon information and belief, notwithstanding Opposer’s rights in and to Opposer’s
`Audax Marks, on May 30, 2013, Applicant filed an intent-to-use application for registration of
`the proposed “Audax” mark for the following services:
`
`• Class 35: Providing benchmark business consulting and information related to
`consumer engagement, and for use as a predictive tool for consumer behavior
`and associated health risks and potential health care costs in the healthcare
`industry
`
`• Class 42: Providing consumers with an interactive web site featuring
`technology that enables users, both individuals and groups of users through a
`social experience,
`to access, enter,
`track, and monitor health records;
`providing an interactive web site featuring technology that enables users, both
`individuals and groups of users through a social experience, to enter, access,
`track, monitor and generate health and medical information and reports;
`providing an interactive web site featuring technology that allows users to
`access health and medical information and reports for improving the overall
`health of consumers, which includes an engagement score that is comprised of
`a consumer’s activity level with respect to fitness, nutrition, wellbeing and
`preventive care and which also includes a customized lifestyle plan for
`consumers that recommends fitness, nutrition, wellbeing and preventive care
`practices based off an individuals’ lifestyle, health data, and personal goals
`
`• Class 44: Providing an interactive website for providing health and medical
`information and reports; Providing health information; providing health
`information to individuals and groups of individuals to track, monitor and
`improve their health; providing health information related to consumer
`
`17801656v.3
`
`-6-
`
`

`
`engagement, and for use as a predictive tool for consumer behavior and
`associated health risks and potential health care costs; providing health
`information to health care providers and employers to empower their members
`to better understand and manage their health
`
`RESPONSE TO NO. 7:
`
`Applicant admits the allegations contained in this paragraph.
`
`OPPOSITION NO. 8:
`
`Said application was assigned Serial No. 85/946,266, and was published for Opposition
`in the Official Gazette of May 20, 2014.
`
`RESPONSE TO NO. 8:
`
`Applicant admits the allegations contained in this paragraph.
`
`OPPOSITION NO. 9:
`
`Opposer’s Audax Marks and Applicant’s purported “Audax” mark are confusingly
`similar in sound and appearance as to be likely, when applied to Applicant’s proposed goods and
`services to cause confusion or mistake or to deceive purchasers resulting in damage and
`detriment to Opposer and its reputation.
`
`RESPONSE TO NO. 9:
`
`Applicant denies the allegations contained in this paragraph.
`
`OPPOSITION NO. 10:
`
`Given the favorable public recognition of Opposer’s Audax Marks, as well as Opposer’s
`use of its Audax Marks in connection with identical and/or closely related healthcare services,
`the public is likely to attribute a common origin or some other common connection, such as
`license from or approval by Opposer, when faced with the potential concurrent use of the
`confusingly similar marks for their services.
`
`RESPONSE TO NO. 10:
`
`Applicant denies that the public is likely to attribute a common origin or some other
`
`common connection, such as license from or approval by Opposer, when faced with the potential
`
`concurrent use of the confusingly similar marks for their services. Applicant lacks information
`
`sufficient to admit or deny the remaining allegations contained in this paragraph.
`
`17801656v.3
`
`-7-
`
`

`
`OPPOSITION NO. 11:
`
`Opposer, upon information and belief, avers that its customers and the general public are
`likely to be confused, mistaken, or deceived as to the origin and sponsorship of Applicant’s
`proposed goods to be marketed under Applicant’s purported “Audax” mark and misled into
`believing that such services emanate from, are licensed by or are in some way directly or
`indirectly associated with or approved by Opposer, to the damage and detriment of Opposer and
`its reputation.
`
`RESPONSE TO NO. 11:
`
`Applicant denies the allegations contained in this paragraph.
`
`OPPOSITION NO. 12:
`
`Opposer, upon information and belief, avers that it will be damaged by the registration by
`Applicant of the purported “Audax” mark, as set forth in Applicant’s Trademark Application
`Serial No. 85/946,266, in that the mark is confusingly similar to Opposer’s Audax Marks,
`including its common law rights, and will be used in connection with goods that, as described in
`their application, would appear to be directly competitive with or closely related to goods offered
`to the public by Opposer, either in its own name or that of its controlled licensee.
`
`RESPONSE TO NO. 12:
`
`Applicant denies the allegations contained in this paragraph.
`
`DATED: August 27, 2014
`
`Respectfully submitted,
`
`SEYFARTH SHAW LLP
`
`By: /s/ Bart A. Lazar
`Bart A. Lazar
`
`Attorneys for Applicant
`AUDAX HEALTH SOLUTIONS, INC.
`
`17801656v.3
`
`-8-
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing Notice of Opposition has
`
`been served on the Attorney of Record and Correspondent as listed on the United States Patent
`
`and Trademark Office website by mailing said copy on August 27, 2014, via First Class Mail,
`
`postage prepaid to:
`
`Jordan M. Heinz
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`(312) 862-2000
`jordan.heinz@kirkland.com
`
`/s/Bart A. Lazar
`
`17801656v.3