Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA885398
`03/23/2018
`
`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
`
`Quest Diagnostics Investments LLC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`03/25/2018
`
`2711 Centerville Road, Suite 400
`Wilmington, DE 19808
`UNITED STATES
`
`Shima S. Roy
`Baker & McKenzie LLP
`300 E. Randolph St.reet, Suite 5000
`Chicago, IL 60601
`UNITED STATES
`Email: chisusptomail@bakermckenzie.com, david.davis@bakermckenzie.com,
`shima.roy@bakermckenzie.com
`Phone: 312-861-8005
`
`Applicant Information
`
`Application No
`
`79195950
`
`Publication date
`
`09/26/2017
`
`Opposition Filing
`Date
`
`International Re-
`gistration No.
`
`Applicant
`
`03/23/2018
`
`1318529
`
`Opposition Peri-
`od Ends
`
`International Re-
`gistration Date
`
`03/25/2018
`
`07/13/2016
`
`PATHOQUEST
`11 R WATT BIOPARK BATIMENT B
`F-75013 PARIS
`FRANCE
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Computers; computer systems, namely,
`software for compiling scientific and biological data and electronic databases recorded on computer
`media in the field of laboratory analysis and diagnostics; computer systems, namely, software for
`analyzing scientific and biological data andelectronic databases recorded on computer media for sci-
`entific and biological use; computer systems comprised of computer hardware and peripherals and
`softwarefor collecting, storing, analysis and reporting of biological information, and follow-up projects
`and monitoring of samples, workflows and laboratory data; chemical and biological analysis software;
`software for collecting, storing, analyzing, monitoring, and reporting and electronic databases recor-
`ded on computer media, all of the foregoing dedicated to the fields of diagnostics and metagenomics;
`software for detecting and analyzing of pathogens in a biological sample and electronic databases
`referencing publiclyavailable collections of genomic information on bacteria and viruses recorded on
`computer media; laboratory apparatus and instruments for the detection of pathogens in a biological
`sample
`
`

`

`Class 042. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Scientific testing services, namely, for test-
`ing and analysis in the field of DNA analysis; medical testing services inthe field of pharmaceutical
`testing; microbiological testing services, namely, providing microbiological sample testingfor others in
`the fields of medicine and research related thereto; computer-aided testing services, namely, genetic
`testing for research purposes; collection and analysis of blood for scientific purposes; preparation of
`biological samples to be analyzed in a laboratory; conducting analysis and products testing in the bio-
`logical, pharmaceutical and bio-pharmaceutical fields; analysis and evaluation of the toxicity and
`safety of biological and pharmaceutical products, and their components; conducting analyses and
`tests by metagenomics; arranging and conducting of scientific and technical reports; advisory ser-
`vices relating to laboratory tests; scientific and medical laboratory services; services of laboratory for
`the preparation, detection, quantification and analysis of biological materials, for genotyping, for dia-
`gnostic tests and for the sequencing of biological molecules, genomes and metagenomes; laboratory
`services for DNA analysis; biological, bacteriological, medical and pharmacological research ser-
`vices; design, development and updating of software and databases dedicated to the fields of dia-
`gnostics and metagenomics; research and development in the field of genome research and genetic
`expression; biotechnology research and development
`
`Class 044. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Medical diagnostic services, namely, test-
`ing and analysis in the field of disease diagnosis; collection and analyses ofhuman blood for medical
`purposes; preparing and processing biological samples for medical and pharmaceutical use intended
`for analysis in laboratories, namely,disease diagnostics; medical analysis in the nature of medical
`testing for diagnosis; medical analysis in the nature ofmedical testing of biological molecules, gen-
`omes and metagenomes for diagnosingof pathogens and infectious diseases; medical and health
`services relating to DNA, genetics and genetic testing, namely, genetic counseling and genetic test-
`ingfor medical purposes; DNA analysis services for medical purposes; preparation and compilation of
`medical reports; medical testing services relating to disease diagnosis and treatment; medical analys-
`is services for the diagnosis and treatment of persons; carrying out disease diagnoses; medical test-
`ing for the diagnosisand treatment of persons
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2365337
`
`Registration Date
`
`07/04/2000
`
`Word Mark
`
`Design Mark
`
`QUEST
`
`Application Date
`
`09/23/1996
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 1997/02/14 First Use In Commerce: 1997/02/14
`providing clinical testing information services for the diagnosis, monitoring and
`treatment of disease
`
`

`

`U.S. Registration
`No.
`
`3850293
`
`Registration Date
`
`09/21/2010
`
`Word Mark
`
`Design Mark
`
`QUEST
`
`Application Date
`
`07/25/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 1997/02/14 First Use In Commerce: 1997/02/14
`Diagnostic reagents and assays for the treatment, monitoring, and diagnosis of
`disease, namely, infectious disease, allergies, microbial disease, pregnancy-re-
`lated disease, bacterial disease, heart disease, viral disease, histological dis-
`ease, genetic disease, blood-related disease, fungal disease, adrenal disease,
`cancer, liver disease, autoimmune disease,growth disorder, and diabetes; dia-
`gnostic reagents and assays for clinical and medical laboratory use; diagnostic
`reagents and assays for the treatment, monitoring, and diagnosis of disease;
`diagnostic reagents for clinical and medical laboratory use; diagnostic kits con-
`sisting primarily of diagnostic assays, specimenholders, diagnostic preparation
`agents,and specimen preparation agents for thetreatment, monitoring, and dia-
`gnosis ofdisease; diagnostic kits consisting primarily of diagnostic assays, speci-
`men holders, diagnostic preparation agents, and specimen preparation agents
`for clinical and medical use
`Class 035. First use: First Use: 1997/02/14 First Use In Commerce: 1997/02/14
`Registration services, namely, databasefor tracking patient information for dia-
`gnostic testing; product demonstration services in the field of medical diagnostic
`testing; computerized database management of diagnostic testing and res-
`ults;computerized database management of medical, hospital, insurance and
`billing records; and providing information regarding hospital billing records
`Class 039. First use: First Use: 1997/02/14 First Use In Commerce: 1997/02/14
`computer services, namely, electronic storage and retrieval of messages and
`data in the fields of diagnostic testing and preparations for the treatment, monit-
`oring and diagnosis of disease; computer services, namely, electronic storage
`andretrieval of biological specimens and diagnostic assays
`
`U.S. Registration
`No.
`
`2365335
`
`Registration Date
`
`07/04/2000
`
`Word Mark
`
`QUEST DIAGNOSTICS
`
`Application Date
`
`09/23/1996
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 1997/02/14 First Use In Commerce: 1997/02/14
`providing clinical testing information services for the diagnosis monitoring and
`treatment of disease
`
`U.S. Registration
`No.
`
`2356304
`
`Registration Date
`
`06/06/2000
`
`Word Mark
`
`Design Mark
`
`QUEST DIAGNOSTICS
`
`Application Date
`
`11/07/1996
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the letter "Q" within a sunburst design, all inside an ellipse
`and combined with the terms "QUEST DIAGNOSTICS".
`
`Class 042. First use: First Use: 1997/02/14 First Use In Commerce: 1997/02/14
`clinical testing information services for the diagnosis, monitoring and treatment
`of disease
`
`U.S. Registration
`No.
`
`3107154
`
`Registration Date
`
`06/20/2006
`
`Word Mark
`
`Design Mark
`
`QUEST DIAGNOSTICS
`
`Application Date
`
`07/02/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 1997/02/14 First Use In Commerce: 1997/02/14
`Printed reports featuring laboratory, clinical and diagnostic testing and results;
`printed information, namely, reports, pamphlets, brochures and leaflets featuring
`diagnostic testing and health information; printed information, namely, reports,
`pamphlets, brochures and leafletsproviding information on medical, hospital, in-
`surance, and billing records; andinstruction sheets regarding medical testing
`
`

`

`procedures and testing results
`Class 035. First use: First Use: 1997/02/14 First Use In Commerce: 1997/02/14
`Computerized database management for tracking patient information for dia-
`gnostic testing; referral services in the fields of medical, health and clinical
`care;product demonstration services in the field of medical diagnostic testing;
`computerized data base management of diagnostic testing and results; compu-
`terized data base management of medical, hospital,insurance and billing re-
`cords; and providing information regarding hospital billing records
`Class 039. First use: First Use: 1997/02/14 First Use In Commerce: 1997/02/14
`Computer services, namely, electronic storage and retrieval of messages and
`data in the fields of diagnostic testing and preparations for the treatment, monit-
`oring or diagnosis of disease; computer services, namely, electronic storage and
`retrieval of biological specimens and diagnostic assays
`Class 042. First use: First Use: 1997/02/14 First Use In Commerce: 1997/02/14
`Medical and testing information services, namely, providing information regard-
`ing diagnostic testing results, testing procedures, disease conditions and dis-
`ease prevention; providing information regarding medical and hospital records;
`and medical and scientific consultation services
`
`U.S. Registration
`No.
`
`3018131
`
`Registration Date
`
`11/22/2005
`
`Application Date
`
`04/10/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`QUESTNET
`
`NONE
`
`Class 036. First use: First Use: 1998/10/30 First Use In Commerce: 1998/10/30
`CLINICAL DIAGNOSTIC LABORATORY BILL PAYMENT SERVICES
`OFFERED TO MANAGED CARE ORGANIZATIONS, HOSPITALS, EMPLOY-
`ERS, AND OTHER INSTITUTIONAL HEALTHCARE PROVIDERS
`Class 042. First use: First Use: 1998/10/30 First Use In Commerce: 1998/10/30
`providing on-line clinical and trial laboratory data and information to managed-
`care organizations, hospitals, employers and other institutional healthcare pro-
`viders; processing requests for diagnostic laboratory tests, performing diagnostic
`laboratory tests, and reporting diagnostic laboratory test results, all performed
`for managed care organizations, hospitals, employers, and other institutional
`healthcare providers; and providing quality assurance services for others relat-
`ing to the foregoing services
`
`U.S. Registration
`No.
`
`3651796
`
`Registration Date
`
`07/07/2009
`
`Word Mark
`
`QUESTCARES
`
`Application Date
`
`07/03/2007
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 044. First use: First Use: 2007/09/00 First Use In Commerce: 2007/09/00
`Diagnostic testing services for the diagnosis, monitoring and treatment of dis-
`ease and providing information regarding the diagnosis, monitoring and treat-
`ment of disease, all for patients with inadequate or no health insurance
`
`U.S. Registration
`No.
`
`4754359
`
`Registration Date
`
`06/16/2015
`
`Word Mark
`
`Design Mark
`
`QUESTCONNECT
`
`Application Date
`
`04/16/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2013/03/11 First Use In Commerce: 2013/03/11
`Computerized database management for tracking patient information for dia-
`gnostic testing; Referral services in the fields of medical, health, and clinical
`care; Computerized database management of diagnostic testing and results;
`Computerized database management of medical, hospital, insurance, and billing
`records; Providing information regarding hospital billing records; Medical billing
`services for hospitals and physician practices; Providing a web-based customer
`service portal for use by physician practices and hospitals for ordering medical
`diagnostic testing supplies
`Class 044. First use: First Use: 2013/03/11 First Use In Commerce: 2013/03/11
`Maintaining patient medical records; Medical diagnostic testing, monitoring, and
`reporting services; Providing a web-based customer service portal for use by
`physician practices and hospitals for requesting medical diagnostic test res-
`ults,scheduling medical diagnostic tests, and management of information con-
`cerning medical diagnostic testing
`
`U.S. Registration
`No.
`
`4541976
`
`Application Date
`
`04/16/2013
`
`

`

`Registration Date
`
`06/03/2014
`
`Word Mark
`
`Design Mark
`
`QUESTCHECK
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 2013/04/07 First Use In Commerce: 2013/04/07
`Providing an online database for storing, searching and retrieving medical insur-
`ance records and patient financial information
`Class 044. First use: First Use: 2013/04/07 First Use In Commerce: 2013/04/07
`Providing an online database for storing, searching and retrieving medical labor-
`atory testing results, medical information, medical documentation, and patient in-
`formation featuring health, lifestyle and personal patient factual information
`
`U.S. Registration
`No.
`
`4831948
`
`Registration Date
`
`10/13/2015
`
`Word Mark
`
`Design Mark
`
`QUESTASSURED
`
`Application Date
`
`04/10/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 044. First use: First Use: 2013/10/07 First Use In Commerce: 2013/10/07
`medical diagnostic testing services; medical information services
`
`U.S. Registration
`No.
`
`4621347
`
`Registration Date
`
`10/14/2014
`
`Word Mark
`
`MYHEALTHYQUEST
`
`Application Date
`
`08/17/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2014/02/06 First Use In Commerce: 2014/02/06
`Personal and professional coaching services in the field of health
`Class 042. First use: First Use: 2014/02/06 First Use In Commerce: 2014/02/06
`Providing a website and portal website featuring technology that enables
`users,namely, physicians and medical personnel and patients to submit, provide
`and exchange health and health-related biometric information, and for the order-
`ing andretrieval of medical and health laboratory tests and test results
`Class 044. First use: First Use: 2014/02/06 First Use In Commerce: 2014/02/06
`Health management services, namely, providing health information, making re-
`commendations for health care, and medical stratification services to identify the
`risk levels of patients and make medical recommendations for care, and provid-
`ing of medical reports and health data analysis; medical diagnostic and reporting
`services; medical oversight management andmedical consulting services per-
`taining to health and health improvement issues,namely, maintaining personal
`medical history records and files, medical counseling, disease management pro-
`grams, and wellness and health-related consulting
`
`U.S. Registration
`No.
`
`4621346
`
`Registration Date
`
`10/14/2014
`
`Word Mark
`
`Design Mark
`
`QUEST4HEALTH
`
`Application Date
`
`08/17/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2014/02/06 First Use In Commerce: 2014/02/06
`Personal and professional coaching services in the field of health
`Class 042. First use: First Use: 2014/02/06 First Use In Commerce: 2014/02/06
`Providing a website and portal website featuring technology that enables
`users,namely, physicians and medical personnel and patients to submit, provide
`and exchange health and health-related biometric information, and for the order-
`
`

`

`ing andretrieval of medical and health laboratory tests and test results
`Class 044. First use: First Use: 2014/02/06 First Use In Commerce: 2014/02/06
`Health management services, namely, providing health information, making re-
`commendations for health care, and medical stratification services to identify the
`risk levels of patients and make medical recommendations for care, and provid-
`ing of medical reports and health data analysis; medical diagnostic and reporting
`services; medical oversight management andmedical consulting services per-
`taining to health and health improvement issues,namely, maintaining personal
`medical history records and files, medical counseling, disease management pro-
`grams, and wellness and health-related consulting
`
`U.S. Registration
`No.
`
`4693274
`
`Registration Date
`
`02/24/2015
`
`Word Mark
`
`Design Mark
`
`MYQUEST
`
`Application Date
`
`11/27/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2014/03/30 First Use In Commerce: 2014/03/30
`Computer application software for mobile handheld computers, namely, software
`for providing, storing, exchanging, retrieving, tracking and transferring health
`and health care information, emergency medical information, billing informa-
`tion,medical and health laboratory test appointment scheduling information,
`medical and health laboratory test results and information, biometric information
`and health education information
`Class 042. First use: First Use: 2014/03/30 First Use In Commerce: 2014/03/30
`Providing a website and portal featuring temporary use of non-downloadable
`software for providing, storing, exchanging,retrieving, tracking and transferring
`health and health care information, emergency medical information, billing in-
`formation, medical and health laboratory test appointment scheduling informa-
`tion, medical and health laboratory test resultsand information, biometric inform-
`ation and health education information
`
`U.S. Registration
`No.
`
`5313562
`
`Registration Date
`
`10/17/2017
`
`Word Mark
`
`QUESTDIRECT
`
`Application Date
`
`12/19/2016
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 044. First use: First Use: 2017/03/27 First Use In Commerce: 2017/03/27
`medical diagnostic testing services; medical information services
`
`U.S. Registration
`No.
`
`5292139
`
`Registration Date
`
`09/19/2017
`
`Word Mark
`
`Design Mark
`
`QUEST VANTAGE
`
`Application Date
`
`05/05/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 044. First use: First Use: 2016/05/26 First Use In Commerce: 2016/05/26
`medical diagnostic testing services
`
`75979210#TMSN.png( bytes )
`76290679#TMSN.png( bytes )
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`76279456#TMSN.png( bytes )
`77221489#TMSN.png( bytes )
`86254174#TMSN.png( bytes )
`85906001#TMSN.png( bytes )
`86593787#TMSN.png( bytes )
`77806230#TMSN.png( bytes )
`77806070#TMSN.png( bytes )
`86131237#TMSN.png( bytes )
`87273542#TMSN.png( bytes )
`87026660#TMSN.png( bytes )
`Opposition_-_PATHOQUEST.pdf(42915 bytes )
`
`

`

`Signature
`
`Name
`
`Date
`
`/Shima S. Roy/
`
`Shima S. Roy
`
`03/23/2018
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`:
`
`
`
`
`
`Quest Diagnostics Investments LLC :
`
`
`
`
`
`:
`
`Opposer,
`
`
`:
`
`
`
`
`
`:
`
`v.
`
`
`
`:
`
`
`
`
`
`:
`PathoQuest
`
`
`
`:
`
`
`
`
`
`:
`
`Applicant.
`
`
`:
`
`
`
`
`
`:
`
`
`
`
`
`
`
`
`
`
`Application Serial No.: 79195950
`
`
`Mark: PATHOQUEST
`
`
`
`
`Opposition No. ________________
`
`
`
`
`
`
`
`
`Quest Diagnostics Investments LLC, a limited liability company organized under the
`
`NOTICE OF OPPOSITION
`
`laws of Delaware with its registered address at 2711 Centerville Road, Suite 400, Wilmington,
`
`Delaware 19808 (hereafter referred to as "Quest" or "Opposer"), believes that it is now, or will
`
`be, damaged by Application No. 79195950 for PATHOQUEST (the "Application") and hereby
`
`opposes the registration of the mark that is the subject of Application No. 79195950 for the
`
`reasons detailed below.
`
`
`
`As grounds for its Notice of Opposition, Quest hereby alleges:
`
`1.
`
`Quest is a market leader in medical, clinical, diagnostic, and laboratory testing
`
`services and related goods and services, including medical diagnostic services and testing and
`
`computer systems to manage data relating to such testing and services.
`
`2.
`
`Quest has operated under the "Quest" brand and house mark for more than twenty
`
`years. In that time, Quest has established the most extensive clinical testing network in the
`
`United States, offering both routine biological tests and complex molecular and gene-based
`
`testing as well as anatomic pathology.
`
`4030697-v3\CHIDMS1
`
`

`

`3.
`
`Quest holds a Federal registration for QUEST, (Registration No. 2,365,337),
`
`which was filed on September 23, 1996, issued on July 4, 2000 and reflects first use in
`
`commerce of the mark since at least as early as February 14, 1997. That registration covers
`
`Class 42 services for "providing clinical testing information services for the diagnosis,
`
`monitoring and treatment of disease."
`
`4.
`
`Quest holds a second registration for QUEST, (Registration No. 3,850,293), that
`
`issued on September 21, 2010 and reflects Quest's first use in commerce date of February 14,
`
`1997 for Class 5, 35, and 39 services that including, inter alia: (i) diagnostic reagents and assays
`
`for the treatment, monitoring, and diagnosis of disease; (ii) computerized database management
`
`of diagnostic testing and results; and (iii) computer services, namely, electronic storage and
`
`retrieval of messages and data in the fields of diagnostic testing and preparations for the
`
`treatment, monitoring and diagnosis of disease.
`
`5.
`
`Quest has used and registered a family of marks featuring QUEST that cover
`
`Class 9, 42, and 44 services and/or diagnostic testing services, including, but not limited to:
`
`(a) QUEST DIAGNOSTICS (Reg. No. 2,365,335), which reflects a first use date
`
`of February 14, 1997 and a registration date of July 4, 2000 for Class 42
`
`services that include "providing clinical testing information services for the
`
`diagnosis monitoring and treatment of disease."
`
`(b) QUEST DIAGNOSTICS & Design (Reg. No. 2,356,304), which also reflects
`
`a first use date of February 14, 1997 and a registration date of July 4, 2000 for
`
`Class 42 services that include "providing clinical testing information services
`
`for the diagnosis monitoring and treatment of disease."
`
`2
`
`

`

`(c) QUEST DIAGNOSTICS (Reg. No. 3,107,154), which reflects a first use dtae
`
`of February 14, 1997 and a registration date of June 20, 2006 for
`
`computerized database management and computer services related to
`
`diagnostic testing in classes 16, 35 and 39.
`
`(d) QUESTNET (Reg. No. 3,018,131), that reflects Quest's first use date of
`
`October 30, 1998 and a registration date of November 22, 2005 for the
`
`following Class 42 services: "Providing on-line clinical and trial laboratory
`
`data and information to managed care organizations, hospitals, employers and
`
`other institutional healthcare providers; processing requests for diagnostic
`
`laboratory tests, performing diagnostic laboratory tests, and reporting
`
`diagnostic
`
`laboratory
`
`test
`
`results, all performed
`
`for managed care
`
`organizations, hospitals, employers, and other
`
`institutional healthcare
`
`providers; and providing quality assurance services for others relating to the
`
`foregoing services."
`
`(e) QUESTCARES (Reg. No. 3,651,796), which reflects a first use date of
`
`September 2007 and a registration date of July 7, 2009 for Class 44 services
`
`covering "Diagnostic testing services for the diagnosis, monitoring and
`
`treatment of disease and providing information regarding the diagnosis,
`
`monitoring and treatment of disease, all for patients with inadequate or no
`
`health insurance."
`
`(f) QUESTCONNECT (Reg. No. 4,754,359), which reflects a first use date of
`
`March 11, 2013 and a registration date of June 16, 2015 for Class 35 services
`
`and Class 44 services for "Maintaining patient medical records; Medical
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`diagnostic testing, monitoring, and reporting services; Providing a web-based
`
`customer service portal for use by physician practices and hospitals for
`
`requesting medical diagnostic test results, scheduling medical diagnostic tests,
`
`and management of information concerning medical diagnostic testing."
`
`(g) QUESTCHECK (Reg. No. 4,541,976), which reflects a first use date of April
`
`7, 2013 and a registration date of June 3, 2014 for Class 36 services and Class
`
`42 services for "providing an online database for storing, searching and
`
`retrieving medical laboratory testing results, medical information, medical
`
`documentation, and patient information featuring health, lifestyle and personal
`
`patient factual information."
`
`(h) QUESTASSURED (Reg. No. 4,831,948), which reflects a first use date of
`
`October 7, 2013 and a registration date of October 13, 2015 for "medical
`
`diagnostic testing services; medical information services."
`
`(i) MYHEALTHQUEST (Reg. No. 4,621,347), which reflects a first use date of
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`February 6, 2014 and a registration date of October 14, 2014 for "Providing a
`
`website and portal website featuring technology that enables users, namely,
`
`physicians and medical personnel and patients to submit, provide and
`
`exchange health and health-related biometric information, and for the ordering
`
`and retrieval of medical and health laboratory tests and test results" in Class
`
`42 and "Health management services, namely, providing health information,
`
`making recommendations for health care, and medical stratification services
`
`to identify the risk levels of patients and make medical recommendations for
`
`care, and providing of medical reports and health data analysis; medical
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`diagnostic and reporting services; medical oversight management and medical
`
`consulting services pertaining to health and health improvement issues,
`
`namely, maintaining personal medical history records and files, medical
`
`counseling, disease management programs, and wellness and health-related
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`consulting" in Class 44.
`
`(j) QUEST4HEALTH (Reg. No. 4,621,346), which reflects a first use date of
`
`February 6, 2014 and a registration date of October 14, 2014 for, inter alia,
`
`"Providing a website and portal website featuring technology that enables
`
`users, namely, physicians and medical personnel and patients to submit,
`
`provide and exchange health and health-related biometric information, and for
`
`the ordering and retrieval of medical and health laboratory tests and test
`
`results" in Class 42 and "Health management services, namely, providing
`
`health information, making recommendations for health care, and medical
`
`stratification services to identify the risk levels of patients and make medical
`
`recommendations for care, and providing of medical reports and health data
`
`analysis; medical diagnostic and reporting services; medical oversight
`
`management and medical consulting services pertaining to health and health
`
`improvement issues, namely, maintaining personal medical history records
`
`and files, medical counseling, disease management programs, and wellness
`
`and health-related consulting" in Class 44.
`
`(k) MYQUEST (Reg. No. 4,693,274), which reflects a first use date of March 30,
`
`2014 and a registration date of February 24, 2015 for "Computer application
`
`software for mobile handheld computers, namely, software for providing,
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`storing, exchanging, retrieving, tracking and transferring health and health
`
`care information, emergency medical information, billing information,
`
`medical and health laboratory test appointment scheduling information,
`
`medical and health laboratory test results and information, biometric
`
`information and health education information" in Class 9 and "Providing a
`
`website and portal featuring temporary use of non-downloadable software for
`
`providing, storing, exchanging, retrieving, tracking and transferring health and
`
`health care information, emergency medical information, billing information,
`
`medical and health laboratory test appointment scheduling information,
`
`medical and health laboratory test results and information, biometric
`
`information and health education information" in Class 42.
`
`These QUEST marks referred to in paragraphs three through five are collectively hereinafter
`
`referred to as the "Quest Marks."
`
`6.
`
`Quest continues to this day to use and promote the "QUEST" mark and other
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`marks that include QUEST as a component, in connection with goods and services that include
`
`medical and diagnostic testing services and software and electronic databases for collecting,
`
`storing and reporting test results and data.
`
`7.
`
`Quest also uses and holds registrations for trademarks that incorporate "QUEST"
`
`in furtherance of those services, including, among others: QUESTDIRECT (Reg. No. 5,313,562)
`
`for Class 44 medical diagnostic testing services and medical information services, and QUEST
`
`VANTAGE (Reg. No. 5,292,139) for Class 44 medical diagnostic testing services.
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`8.
`
`On information and belief, the owner of Application No. 79195950 for
`
`PATHOQUEST is PathoQuest, a French company located at BioPark Batiment B, 11 rue Watt,
`
`75013 Paris, France (hereinafter referred to as "Applicant" or "PathoQuest").
`
`9.
`
`On information and belief, PathoQuest offers diagnostic testing and software that
`
`shares and reports diagnostic testing data.
`
`10.
`
`PathoQuest emphasizes the term "Quest" in its business operations by visually
`
`distinguishing and calling out "Quest" on
`
`its website and other means.
`
` See
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`https://www.pathoquest.com/?page_id=39.
`
`11.
`
`Pathoquest's Application No. 79195950 for PATHOQUEST covers the following
`
`goods: "Computers; computer systems, namely, software for compiling scientific and biological
`
`data and electronic databases recorded on computer media in the field of laboratory analysis and
`
`diagnostics; computer systems, namely, software for analyzing scientific and biological data and
`
`electronic databases recorded on computer media for scientific and biological use; computer
`
`systems comprised of computer hardware and peripherals and software for collecting, storing,
`
`analysis and reporting of biological information, and follow-up projects and monitoring of
`
`samples, workflows and laboratory data; chemical and biological analysis software; software for
`
`collecting, storing, analyzing, monitoring, and reporting and electronic databases recorded on
`
`computer media, all of the foregoing dedicated to the fields of diagnostics and metagenomics;
`
`software for detecting and analyzing of pathogens in a biological sample and electronic
`
`databases referencing publicly available collections of genomic information on bacteria and
`
`viruses recorded on computer media; laboratory apparatus and instruments for the detection of
`
`pathogens in a biological sample" in Class 9; "Scientific testing services, namely, for testing and
`
`analysis in the field of DNA analysis; medical testing services in the field of pharmaceutical
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`testing; microbiological testing services, namely, providing microbiological sample testing for
`
`others in the fields of medicine and research related thereto; computer-aided testing services,
`
`namely, genetic testing for research purposes; collection and analysis of blood for scientific
`
`purposes; preparation of biological samples to be analyzed in a laboratory; conducting analysis
`
`and products testing in the biological, pharmaceutical and bio-pharmaceutical fields; analysis and
`
`evaluation of the toxicity and safety of biological and pharmaceutical products, and their
`
`components; conducting analyses and tests by metagenomics; arranging and conducting of
`
`scientific and technical reports; advisory services relating to laboratory tests; scientific and
`
`medical laborat