Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA729313
`02/24/2016
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer Information
`
`Name
`
`Blue Cross and Blue Shield Association
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`02/24/2016
`
`225 North Michigan Avenue
`Chicago, IL 60601
`UNITED STATES
`
`John A. Cullis
`Reed Smith LLP
`10 South Wacker Drive, 40th Floor
`Chicago, IL 60606-7507
`UNITED STATES
`ipdocket-chi@reedsmith.com, jhultquist@reedsmith.com,
`jcullis@reedsmith.com, kpope@reedsmith.com, mthelwell@reedsmith.com,
`mbenson@reedsmith.com Phone:312-207-1000
`
`Applicant Information
`
`Application No
`
`86618935
`
`Publication date
`
`10/27/2015
`
`Opposition Filing
`Date
`
`Applicant
`
`02/24/2016
`
`Opposition Peri-
`od Ends
`
`02/24/2016
`
`Zoom Management, Inc.
`19075 NW Tanasbourne Dr., Suite 200
`Hillsboro, OR 97124
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 044. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Medical and health care services, namely,
`medical clinic services, walk-in medical clinic services, non-emergency medical diagnostics, medical
`treatment for urgent and non-urgent illnesses and injuries, health maintenance, health care informa-
`tion and consulting services, medicaltesting services, preventive health care and follow up services,
`medical and pharmaceutical consultation services, physiotherapy services, mental health care ser-
`vices, diagnosis and treatment of disease, providing health care information via telephone and the In-
`ternet, home health care services, mobile health care centers, and providing health care information
`and consultant services in connection with aforesaid services
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Dilution by blurring
`
`Trademark Act section 2(d)
`
`Trademark Act section 43(c)
`
`

`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`554488
`
`Registration Date
`
`02/05/1952
`
`Application Date
`
`09/30/1947
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BLUE-CROSS
`
`NONE
`
`Class 036. First use: First Use: 1934/12/00 First Use In Commerce: 1934/12/00
`DISTRIBUTION OF HOSPITAL CARE ON A PRE-PAYMENT FINANCING
`BASIS
`
`U.S. Registration
`No.
`
`554817
`
`Registration Date
`
`02/12/1952
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`08/19/1947
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 1934/12/00 First Use In Commerce: 1934/12/00
`DISTRIBUTION OF HOSPITAL CARE ON A PRE-PAYMENT FINANCING
`BASIS
`
`U.S. Registration
`No.
`
`969385
`
`Registration Date
`
`09/25/1973
`
`Word Mark
`
`NONE
`
`Application Date
`
`12/05/1972
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 1972/11/09 First Use In Commerce: 1972/11/09
`PREPAID FINANCING OF HOSPITAL AND HEALTH CARE SERVICES
`
`U.S. Registration
`No.
`
`990414
`
`Registration Date
`
`08/06/1974
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`03/01/1973
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 1972/11/09 First Use In Commerce: 1972/11/09
`PRE-PAID FINANCING OF HOSPITAL AND HEALTH CARE SERVICES
`
`

`
`U.S. Registration
`No.
`
`1055560
`
`Registration Date
`
`01/04/1977
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`04/05/1976
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 1972/11/09 First Use In Commerce: 1972/11/09
`BOOKLETS DEALING WITH HEALTH CARE BENEFITS
`
`U.S. Registration
`No.
`
`1293243
`
`Registration Date
`
`09/04/1984
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`07/25/1983
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 1968/12/31 First Use In Commerce: 1968/12/31
`Prepaid Financing and Administration ofDental and Related Health Care Ser-
`vices
`
`

`
`U.S. Registration
`No.
`
`1425238
`
`Registration Date
`
`01/13/1987
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`08/29/1985
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 1973/12/00 First Use In Commerce: 1973/12/00
`HOME HEALTHCARE SERVICES, PREVENTIVE HEALTHCARE SERVICES,
`HEALTH CARE SERVICES RENDERED THROUGH A HEALTH MAINTEN-
`ANCE ORGANIZATION NAMELY PHYSICIAN SERVICES, DENTAL SER-
`VICES, HOSPITAL SERVICES, HEALTHTREATMENT AND THERAPY SER-
`VICES, DIAGNOSTIC TESTING AND EXAMINATION SERVICES, FAMMILY
`PLANNING SERVICES, MENTAL HEALTH SERVICES, NURSING SERVICES
`AND PRESCRIPTION DRUG SERVICES, AND ARRANGING FOR AMBU-
`LANCE SERVICES
`
`U.S. Registration
`No.
`
`1426942
`
`Registration Date
`
`01/27/1987
`
`Application Date
`
`08/29/1985
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BLUE CROSS
`
`NONE
`
`Class 042. First use: First Use: 1973/12/00 First Use In Commerce: 1973/12/00
`HOME HEALTHCARE SERVICES, PREVENTIVE HEALTHCARE SERVICES,
`HEALTH CARE SERVICES RENDERED THROUGH A HEALTH MAINTEN-
`ANCE ORGANIZATION, NAMELY PHYSICIAN SERVICES, DENTAL SER-
`VICES, HOSPITAL SERVICES, HEALTH TREATMENT AND THERAPY SER-
`VICES, DIAGNOSTIC TESTING AND EXAMINATION SERVICES, FAMILY
`PLANNING SERVICES, MENTAL HEALTH SERVICES, NURSING SERVICES
`
`

`
`AND PRESCRIPTION DRUG SERVICES, AND ARRANGING FOR AMBU-
`LANCE SERVICES
`
`U.S. Registration
`No.
`
`1632573
`
`Registration Date
`
`01/22/1991
`
`Application Date
`
`04/16/1990
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BLUE CROSS
`
`NONE
`
`Class 036. First use: First Use: 1934/12/00 First Use In Commerce: 1934/12/00
`prepaid financing and administration ofmedical, hospital and related health ser-
`vices
`
`U.S. Registration
`No.
`
`1691498
`
`Registration Date
`
`06/09/1992
`
`Application Date
`
`05/24/1991
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BLUE CROSS
`
`NONE
`
`Class 016. First use: First Use: 1934/12/00 First Use In Commerce: 1934/12/00
`educational books, binders, trade journals, and newsletters in the field of health
`and insurance; printed forms, notebooks, pens and pencils
`
`U.S. Registration
`No.
`
`1699627
`
`Registration Date
`
`07/07/1992
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`07/22/1991
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`NONE
`
`

`
`Goods/Services
`
`Class 042. First use: First Use: 1988/06/28 First Use In Commerce: 1988/06/28
`health care services rendered through ahealth maintenance organization;
`namely, physician services, dental services, hospital services, home health care
`services, preventative health care services, health care services, medical lab
`services, counselling services in the field offamily planning, mental health ser-
`vicesand pharmacy services
`
`U.S. Registration
`No.
`
`1763481
`
`Registration Date
`
`04/06/1993
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`04/24/1992
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 1972/12/00 First Use In Commerce: 1972/12/00
`association services; namely, promotingthe interest of providing quality, costef-
`fective health care
`
`U.S. Registration
`No.
`
`1826582
`
`Registration Date
`
`03/15/1994
`
`Word Mark
`
`NONE
`
`Application Date
`
`04/16/1990
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 1934/12/00 First Use In Commerce: 1934/12/00
`prepaid financing, and administration thereof, of dental, hospital and related
`health care services
`
`U.S. Registration
`No.
`
`1997328
`
`Registration Date
`
`08/27/1996
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`01/21/1994
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 1996/01/01 First Use In Commerce: 1996/01/01
`underwriting, financing, administration, and brokerage of life insurance
`
`U.S. Registration
`No.
`
`2027402
`
`Registration Date
`
`12/31/1996
`
`Application Date
`
`01/21/1994
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BLUE CROSS
`
`NONE
`
`Class 036. First use: First Use: 1996/01/01 First Use In Commerce: 1996/01/01
`underwriting, financing, administration, and brokerage of life insurance
`
`U.S. Registration
`No.
`
`2150555
`
`Registration Date
`
`04/14/1998
`
`Application Date
`
`02/07/1997
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BLUE CROSS AND BLUE SHIELD ASSOCIATION
`
`NONE
`
`Class 036. First use: First Use: 1982/00/00 First Use In Commerce: 1982/00/00
`prepaid financing and administration ofmedical, hospital and related health care
`services
`Class 042. First use: First Use: 1982/00/00 First Use In Commerce: 1982/00/00
`comprehensive health care benefit programs, rendered through a health main-
`tenance organization, namely, physician, dental, hospital, home health care,
`prevent health treatment, therapy, pharmacy and ambulatory services
`
`U.S. Registration
`No.
`
`2161616
`
`Registration Date
`
`06/02/1998
`
`Application Date
`
`02/07/1997
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BLUE CROSS AND BLUE SHIELD ASSOCIATION
`
`NONE
`
`Class 016. First use: First Use: 1982/00/00 First Use In Commerce: 1982/00/00
`health care and wellness educational books, binders, printed forms, health
`careand wellness trade journals, health care and wellness newsletters, note-
`books, pens and pencils
`
`U.S. Registration
`No.
`
`2194956
`
`Registration Date
`
`10/13/1998
`
`Word Mark
`
`NONE
`
`Application Date
`
`04/01/1997
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 1996/10/00 First Use In Commerce: 1996/10/00
`insurance, namely, underwriting in the field of workers compensation with or
`without a managed care component
`
`U.S. Registration
`No.
`
`3132422
`
`Registration Date
`
`08/22/2006
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`07/06/2005
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 1988/08/01 First Use In Commerce: 1988/08/01
`items of clothing and headgear, namely,t-shirts, shorts, sweatshirts, sweatpants,
`pullover tops, jackets, coats, socks, hats, caps and visors
`
`U.S. Registration
`No.
`
`3132578
`
`Registration Date
`
`08/22/2006
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`08/19/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 1988/08/01 First Use In Commerce: 1988/08/01
`pencils, pens, writing paper, envelopes, announcement cards, non-electric pen-
`cil sharpeners, drawing pads, paper identification tags, paper sheets, note pads,
`greeting cards, paperweights, stands forpencils and pens, calendars, diaries and
`stickers
`
`U.S. Registration
`No.
`
`3172396
`
`Registration Date
`
`11/14/2006
`
`Word Mark
`
`NONE
`
`Application Date
`
`03/31/2005
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 1997/04/01 First Use In Commerce: 1997/04/01
`Administration, financial management and maintenance of health savings ac-
`counts, medical savings accounts, and flexiblespending accounts; insurance
`claims administration
`
`U.S. Registration
`No.
`
`3148694
`
`Registration Date
`
`09/26/2006
`
`Word Mark
`
`Design Mark
`
`THE VALUE OF BLUE
`
`Application Date
`
`11/03/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 2001/04/15 First Use In Commerce: 2001/04/15
`Prepaid financing and administration ofmedical, hospital and related health care
`services
`Class 044. First use: First Use: 2001/04/15 First Use In Commerce: 2001/04/15
`Comprehensive health care benefit programs, including those rendered through
`a health maintenance organization and preferred provider organization, namely,
`physician, dental, hospital, home health care, preventive health treatment, ther-
`
`

`
`apy, pharmacy, and ambulatory services
`
`U.S. Registration
`No.
`
`3175326
`
`Registration Date
`
`11/21/2006
`
`Word Mark
`
`Design Mark
`
`BLUE CROSS
`
`Application Date
`
`03/31/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 1997/04/01 First Use In Commerce: 1997/04/01
`Administration, financial management and maintenance of health savings ac-
`counts, medical savings accounts, health reimbursement arrangements and
`flexible spending accounts
`
`U.S. Registration
`No.
`
`3255615
`
`Registration Date
`
`06/26/2007
`
`Word Mark
`
`Design Mark
`
`WALKING WORKS
`
`Application Date
`
`05/10/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2005/05/15 First Use In Commerce: 2005/05/15
`Educational services, namely conductingclasses and seminars in the fields of
`
`

`
`health, fitness, diet and lifestyle choices; entertainment services, namely organ-
`izing and conducting walking events to increase the awareness of physical fit-
`ness
`
`U.S. Registration
`No.
`
`3288738
`
`Registration Date
`
`09/04/2007
`
`Word Mark
`
`Design Mark
`
`BLUE CROSS
`
`Application Date
`
`03/31/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 2006/11/30 First Use In Commerce: 2006/11/30
`Banking and financial services, namely,checking and savings account services,
`electronic funds transfer, [ cash management and disbursement services, lend-
`ing services, acceptance of deposits and loan payments, check cashing and
`check issuance, ] electronic payment services, providing financial information by
`electronic means, providing secure financial transactions in the nature of elec-
`tronic cash transactions, electronic check processing transactions, [ trustee ser-
`vices, investment security services, certificates of deposits, ] asset management
`services, stored-value card services, smart card services, [ credit card services,
`] all of which are provided in connection with health care coverage plans
`
`U.S. Registration
`No.
`
`3288740
`
`Registration Date
`
`09/04/2007
`
`Word Mark
`
`NONE
`
`Application Date
`
`03/31/2005
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 2006/11/30 First Use In Commerce: 2006/11/30
`Banking and financial services, namely,checking and savings account services,
`electronic funds transfer, [ cash management and disbursement services, lend-
`ing services, acceptance of deposits and loan payments, check cashing and
`check issuance, ] electronic payment services, providing financial information by
`electronic means, providing secure financial transactions in the nature of elec-
`tronic cash transactions, electronic check processing transactions, [ trustee ser-
`vices, investment security services, certificates of deposits, ] asset management
`services, stored-value card services, smart card services, [ credit card services,
`] all of which are provided in connection with health care coverage plans
`
`U.S. Registration
`No.
`
`3313851
`
`Registration Date
`
`10/16/2007
`
`Word Mark
`
`Design Mark
`
`BLUE DISTINCTION
`
`Application Date
`
`08/26/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2006/06/05 First Use In Commerce: 2006/06/05
`Assessing healthcare service provider performance, providing centers for excel-
`
`

`
`lence programs, providing specialty care centers, namely, conducting a quality
`measurement, improvement and assurance surveys in hospitals to determine
`service quality
`Class 036. First use: First Use: 2006/06/05 First Use In Commerce: 2006/06/05
`Organization and administration of pre-paid, preferred provider organization,
`health maintenance organization, exclusive provider organization, and point of
`service healthcare plans
`Class 044. First use: First Use: 2006/06/05 First Use In Commerce: 2006/06/05
`Healthcare services and comprehensive healthcare benefits programs, including
`those rendered through a health maintenance organization and preferred pro-
`vider organization, namely physician, dental, hospital, home health care, pre-
`ventative healthcare treatment, physical therapy and dispensing of pharmaceut-
`icals services; Healthcare consulting services
`
`U.S. Registration
`No.
`
`3506603
`
`Registration Date
`
`09/23/2008
`
`Application Date
`
`05/23/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`BLUE DISTINCTION CENTERS
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2006/06/30 First Use In Commerce: 2006/06/30
`Assessing healthcare service provider performance; providing specialty care
`centers, namely, conducting quality measurement, improvement and assurance
`surveys in hospitals to determine service quality
`Class 036. First use: First Use: 2006/06/30 First Use In Commerce: 2006/06/30
`Organization and administration of pre-paid, preferred provider organization,
`health maintenance organization, exclusive provider organization and point of
`service healthcare plans
`Class 044. First use: First Use: 2006/06/30 First Use In Commerce: 2006/06/30
`Healthcare services; providing centers for excellence programs in the field of
`healthcare, namely, providing health andmedical care information to enable con-
`sumers to make more informed healthcare decisions in collaboration with health
`care providers to improve outcomes and affordability; providing centers for spe-
`cialty healthcare, namely, bariatric surgery and obesity care centers, cancer
`care centers, medical transplant centers, andcancer care centers
`
`U.S. Registration
`No.
`
`3709962
`
`Registration Date
`
`11/10/2009
`
`Application Date
`
`07/31/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`BLUECROSS BLUESHIELD VENTURE PARTNERS, L.P. AN INDEPENDENT
`LICENSEE OF THE BLUECROSS AND BLUE SHIELD ASSOCIATION
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a design of a cross encasing a stylized design of the vit-
`ruvian man featured to the left of the design of a shield encasing the staff of As-
`clepius. Featured adjacent to these designs are the words "BlueCross Blue-
`Shield" featured above the words "Venture Partners, L.P." and beneath all is a
`tagline"An independent Licensee of the Blue Cross and Blue Shield Associ-
`ation".
`
`Class 036. First use: First Use: 2008/08/29 First Use In Commerce: 2008/08/29
`financial services, namely, venture capital funding services to emerging and
`start-up companies
`
`U.S. Registration
`No.
`
`4111938
`
`Registration Date
`
`03/13/2012
`
`Word Mark
`
`Design Mark
`
`BLUE
`
`Application Date
`
`08/04/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 036. First use: First Use: 1997/05/31 First Use In Commerce: 1997/05/31
`Prepaid financing and administration ofmedical, hospital and related health care
`services
`
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`73555889#TMSN.png( bytes )
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`ZOOM+VIBES_NOO_w_Exhibits.pdf(1035198 bytes )
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`Certificate of Service
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`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.
`
`Signature
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`Name
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`Date
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`/John A. Cullis/
`
`John A. Cullis
`
`02/24/2016
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`IN RE: APPLICATION SERIAL NO. 86/618,935
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`BLUE CROSS AND BLUE SHIELD
`ASSOCIATION,
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`Opposer,
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`v.
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`ZOOM MANAGEMENT, INC.,
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`Applicant.
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`
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`Mark:
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`
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`Opposition No.:__________________
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`NOTICE OF OPPOSITION
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`
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`Opposer, Blue Cross and Blue Shield Association (“Opposer” or “BCBSA”), a not-for-
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`profit membership-based corporation organized and existing under the laws of the State of
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`Illinois, doing business at 225 North Michigan Avenue, Chicago, IL 60601-7680, believes that it
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`will be damaged by registration of the mark “ZOOM+VIBES” in International Class 44, as
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`shown in Application Serial No. 86/618,935, (“Applicant’s Mark” or the “ZOOM+VIBES
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`Mark”) filed by Applicant, Zoom Management, Inc., an Oregon corporation (“Applicant)
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`having an address of 19075 NW Tanasbourne Drive, Suite 200 Hillboro, Oregon 97124, and
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`hereby opposes the same and requests that registration to Applicant be refused.
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`As its grounds for opposition, Opposer hereby alleges that:
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`1.
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`On May 4, 2015, Applicant filed Application Serial No. 86/618,935
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`(“Application”) under Section 1(b) of the Lanham Act. The Application was published in the
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`U.S. Patent & Trademark Office’s Official Gazette on October 27, 2015. The Application on its
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`face seeks to cover the following services: “Medical and health care services, namely, medical
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`clinic services, walk-in medical clinic services, non-emergency medical diagnostics, medical
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`treatment for urgent and non-urgent illnesses and injuries, health maintenance, health care
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`information and consulting services, medical testing services, preventive health care and follow
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`up services, medical and pharmaceutical consultation services, physiotherapy services, mental
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`health care services, diagnosis and treatment of disease, providing health care information via
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`telephone and the Internet, home health care services, mobile health care centers, and providing
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`health care information and consultant services in connection with aforesaid services,” in
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`International Class 44. The Application is intent-to-use based, filed under 15 U.S.C. § 1051(b).
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`2.
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`3.
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`This Notice of Opposition is being timely submitted.
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`Opposer is a national association of 36 independent, community-based, and
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`locally operated BLUE CROSS® and BLUE SHIELD® companies (“Member Plans”). BCBSA
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`represents the nation’s oldest and largest family of health benefits companies. For over 80 years,
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`BCBSA (including through its predecessors in interest and its Member Plans and licensees) has
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`provided tens of millions of families with top-quality affordable health care plans. BCBSA’s
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`Member Plans currently provide health care plans for nearly 105 million people in the United
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`States - or about 1 in 3 Americans - and offer health care plans in all 50 states, the District of
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`Columbia, and in Puerto Rico. More than 96% of hospitals and 92% of physicians in the United
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`States contract with BCBSA’s Member Plans - more than any other insurer. BCBSA’s Member
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`Plans currently have local and national presence in 75% of all Fortune 500 companies and 86%
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`of all Fortune 100 companies.
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`- 2 -
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`4.
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`The BLUE CROSS and BLUE SHIELD brands are among the most recognized in
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`the health and health-related industries in the United States - and, indeed, in any industry.
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`BCBSA is the owner of the BLUE CROSS word and design marks, the BLUE SHIELD word
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`and design marks, as well as other marks consisting of the image of a blue cross or the image of
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`a blue shield (or both). It licenses the use of various such marks to its Member Plans and other
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`licensees for the provision of a wide variety of goods and services, including, but not limited to,
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`health insurance, life insurance, dental insurance, vision insurance, disability insurance, long-
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`term care insurance, workers’ compensation insurance, health care delivery services, financial
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`services, wellness services, health education, and other related goods and services. BCBSA
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`(including through its predecessors in interest and its Member Plans and licensees) has been
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`using these trademarks and service marks since at least as early as 1934 (BLUE CROSS) and
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`1939 (BLUE SHIELD).
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`5.
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`In the United States alone, BCBSA currently owns over 200 valid and subsisting
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`U.S. federal trademark and service mark registrations. Many of its U.S. federal registrations
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`have become incontestable under Section 15 of the Lanham Act. Additionally, BCBSA owns
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`similar trademark and service mark registrations in more than 170 countries throughout the
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`world. All of these (along with numerous trade names and common-law marks) form a “family”
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`of BLUE trade names, trademarks, and service marks (“Blue Marks”). Under the Lanham Act,
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`BCBSA’s incontestable U.S. federal registrations are conclusive evidence of BCBSA’s exclusive
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`right to use or authorize the use of the Blue Marks in commerce.
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`6.
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`BCBSA (including through its Member Plans and licensees) has extensively used,
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`advertised, and promoted the Blue Marks throughout the United States. For instance, in past
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`- 3 -
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`years, annual gross revenue under the Blue Marks has exceeded $360 billion. BCBSA
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`(including through its Member Plans and licensees) spends millions of dollars in advertising and
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`promoting its marks, services, products, and image, thereby creating substantial goodwill in the
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`marketplace. As a result, the general public recognizes the Blue Marks separately and
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`collectively as identifying BCBSA and its Member Plans and licensees - and the quality services
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`they render. The Blue Marks are an asset of incalculable value to BCBSA and it has vigorously
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`and successfully protected its marks. Moreover, at least as far back as 1977, federal district
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`courts and other legal panels such as the World Intellectual Property Organization Uniform
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`Dispute Resolution Policy Panel have expressly recognized the fame of the Blue Marks in the
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`context of trademark disputes or litigation. In sum, the Blue Marks have long been famous; and
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`the Blue Marks were famous long before Applicant’s adoption of, use of, or Application to
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`register Applicant’s Mark.
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`7.
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`Among BCBSA’s Blue Marks are a wide range of marks consisting entirely or
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`substantially of either the words BLUE CROSS or an image of a blue cross (or both) (the “Blue
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`Cross Marks”). Historically and through the present, these Blue Cross Marks span a variety of
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`differently-configured crosses. BCBSA (including through its predecessors in interest and its
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`Member Plans and licensees) has used and does use the Blue Cross Marks in a wide range of
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`blue colors, from light to dark and through a variety of hues and tones. The Blue Cross Marks
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`have long been famous; and the Blue Cross Marks were famous long before Applicant’s
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`adoption of, alleged use of, or Application to register Applicant’s Mark.
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`8.
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`Several of BCBSA’s U.S. federal trademark registrations for its Blue Marks and
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`Blue Cross Marks are listed in Exhibit A hereto or identified as “Marks Cited by Opposer as
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`- 4 -
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`Basis for Opposition” in Opposer’s electronic submission of this Opposition, and are asserted as
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`the basis for this opposition.
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`9.
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`As further basis for this opposition, BCBSA asserts its rights in the marks
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`consisting of or including an image of a cross design as shown in any of Opposer’s registrations
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`referenced above or consisting of or including the words BLUE CROSS in connection with the
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`following goods and services for which use has been or is at common law: a broad range of
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`health, insurance, medical, and related services, including without limitation health insurance
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`services; health plan services; health care plan administration; health care management and
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`consulting services; claims administration; dental insurance services; workers’ compensation
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`services; disability insurance services; life insurance services; long term care insurance services;
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`health care services; medical services; health care delivery through medical clinics, physicians,
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`biometric and wellness screening services, wellness programs, and nurse advice hotlines;
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`assessing health care service provider performance; providing centers-for-excellence programs in
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`the field of health care; providing services for locating and connecting with health care providers
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`and physicians; and providing information, conducting classes and seminars in the fields of
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`health, fitness, diet/nutrition and lifestyle choices, and related educational services.
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`10.
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`Despite BCBSA’s long-standing prior rights in its famous Blue Cross Marks,
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`Applicant filed its Application on or about May 4, 2015, to register the mark “ZOOM+VIBES”
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`in International Class 44.
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`11.
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`Applicant’s use of the “ZOOM+VIBES” mark in the United States is or will be
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`directed at the same consumers that Opposer targets with its use of its famous Blue Cross Marks.
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`- 5 -
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`12.
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`Upon information and belief, Applicant is using, and intends to continue to use,
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`the color blue in connection with Applicant’s Mark. (See e.g.,
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`https://www.zoomcare.com/news/zoomcare-announces-on-demand-neighborhood-health-
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`campus; attached hereto as Exhibit B.)
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`13. Moreover, Applicant previously filed U.S. Trademark Applications for similar
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`marks that incorporate cross design elements in the color blue for use in connection with similar
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`services, U.S. Serial Nos. 86/614,666 and 86/614,675. On November 8, 2015, the Examining
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`Attorney for Applicant’s prior applications issued Office Actions refusing registration on 2(d)
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`likelihood of confusion grounds, citing five of BCBSA’s Blue Cross Marks, including several of
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`those supporting the instant Opposition. (See Exhibit C.) Applicant has not yet responded to
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`either of those Office Actions; they remain pending.
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`U.S. Serial No. 86/614,666
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`
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`
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`U.S. Serial No. 86/614,675
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`14.
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`Applicant’s Mark is confusingly similar to BCBSA’s Blue Cross Marks. Among
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`other things, Applicant’s Mark contains a cross. Applicant uses similar ways of presenting the
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`cross element of Applicant’s Mark as the Blue Cross Marks. Overall, Applicant’s Mark creates a
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`confusingly similar commercial impression to BCBSA’s Blue Cross Marks. Furthermore, the
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`services listed in the Application are identical to, similar to, overlap with, or are otherwise the
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`type to be seen as emanating from the same source under a single mark as those goods or
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`- 6 -
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`services designated by BCBSA’s Blue Cross Marks. Consequently, Applicant’s Mark is
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`therefore likely to confuse, cause mistake among, or deceive the relevant public into believing
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`that Applicant and Applicant’s goods and services offered in connection with Applicant’s Mark
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`are sponsored by, endorsed by, or in some manner related to BCBSA (or its Member Plans or
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`licensees) in violation of 15 U.S.C. § 1052(d).
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`15.
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`Upon information and belief, Applicant selected, adopted, began using and
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`continues to use Applicant’s Mark with full knowledge of BCBSA’s Blue Cross Marks and Blue
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`Marks, and with the intent to confuse, cause mistake among, and deceive the public into
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`believing that Applicant’s services are of the same high quality as, or are in some way associated
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`with the services of BCBSA (or its Member Plans or licensees).
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`16.
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`Issuance of a registration and use of Applicant’s Mark is likely to diminish the
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`distinctive quality of BCBSA’s rights in its famous Blue Marks, and in particular the Blue Cross
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`Marks, and would blur and otherwise impair the distinctiveness of the Blue Marks, and in
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`particular the Blue Cross Marks, in violation of 15 U.S.C. § 1125(c).
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`17.
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`Likewise, registration of Applicant’s Mark, as described in the Application, will
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`injure BCBSA by causing the relevant public to be confused, mistaken, or deceived to the
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`detriment of BCBSA, by diluting the distinctive quality of BCBSA’s famous Blue Cross Marks
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`and Blue Marks, and by harming the reputation of BCBSA and its marks by associating them
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`with Applicant.
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`- 7 -
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`18.
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`For the reasons set forth in this Notice of Opposition, BCBSA believes that it will
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`be damaged by the registration of Applicant’s Mark in the Application. Accordingly, BCBSA
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`requests and prays that the Application (and all parts of it) be denied registration.
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`WHEREFORE, Opposer requests that this Opposition be sustained, and Application
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`Serial No. 86/618,935 be refused registration.
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`The requisite filing fee of $300.00 and any additional fees related to this matter are
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`being charged to a MasterCard credit card concurrently with this filing.
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`Respectfully submitted,
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`BLUE CROSS AND BLUE SHIELD
`ASSOCIATION
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`
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`By: / John A. Cullis/