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A sample Answer filed with the USPTO's Trademark Trial and Appeal Board
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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA285580Filing date: 05/22/2009
IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91189782
Party DefendantPhysician's Healthcare Solutions
CorrespondenceAddress
PHYSICIAN'S HEALTHCARE SOLUTIONS2007 YANCEYVILLE STGREENSBORO, NC 27405-5000UNITED STATES
Submission Answer
Filer's Name Erik M. Pelton
Filer's e-mail [email protected]
Signature /ErikMPelton/
Date 05/22/2009
Attachments PRIMARY CARE ONE - Answer - FINAL.pdf ( 6 pages )(25383 bytes )
IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
ANSWER TO NOTICE OF OPPOSITION
The following is the Answer of ApplicantPhysician’s Healthcare Solutions
("Applicant"), owner of Federal Trademark Application Serial No.77452208for the mark
PRIMARY CARE ONE(hereinafter "Applicant’s Mark"), by and through Counsel, Erik M.
Pelton & Associates, PLLC, to the Notice of Opposition filed onApril 13, 2009 by Carefirst of
Maryland, Inc., d/b/a CareFirst BlueCross BlueShield(hereinafter“Carefirst or "Opposer"), and
assigned Opposition No.91189782.
1. Applicant is without knowledge or information sufficient to form a belief as to the
truth of allegations contained in paragraph 1 of the Notice of Opposition. Since Applicant can
neither admit nor deny the paragraphas written, Applicant must deny.
2. Applicant is without knowledge or information sufficient to form a belief as to the
truth of allegations contained in paragraph2 of the Notice of Opposition. Since Applicant can
neither admit nor deny the paragraph as written, Applicant must deny.
3. Applicant is without knowledge or information sufficient to form a belief as to the
truth of allegations contained in paragraph3 of the Notice of Opposition, specifically whether
Opposer is the current correct and proper owner of the claimed registrations, and whether each
Carefirst of Maryland, Inc., d/b/a CareFirstBlueCross BlueShield
Opposer,
v.
Physician's Healthcare Solutions,Applicant.
Opposition No. 91189782
Mark:
PRIMARY CARE ONE
Opposition No. 91189782: ANSWER TO NOTICE OF OPPOSITION p.2
registration is currently valid and subsisting. Since Applicant can neither admit nor deny the
paragraph as written, Applicant must deny.
4. Denied.
5. Denied.
6. Denied, as Applicantis without knowledge or informationsufficient to form a
belief as toOpposer’s date of first use for the “CAREFIRST” mark and name; whether Opposer
is the current correct and proper owner of the claimed registrations; and whether each
registration is currently valid and subsisting; and therefore Applicant is without knowledge and
information sufficient to form a belief as to priority.
7. Denied.
8. Denied.
9. Applicant is without knowledge or information sufficient to form a belief as to the
truth of allegations contained in paragraph9 of the Notice of Opposition. Since Applicant can
neither admit nor deny the paragraph as written, Applicant must deny.
10. Admitted.
11. Denied.
12. Applicant is without knowledge or information sufficient to form a belief as to the
truth of allegations contained in paragraph 12 of the Notice of Opposition. Since Applicant can
neither admit nor deny the paragraph as written, Applicant must deny.
13. Denied.
14. Denied.
15. Denied.
FURTHERMORE, Applicant sets forth the followingin support of its position:
Opposition No. 91189782: ANSWER TO NOTICE OF OPPOSITION p.3
16. Applicant’s mark is unique and distinctive.
17. The wording in Applicant’s mark and Opposer’s mark are different.
18. Applicant’s mark and Opposer’s mark are different in appearance.
19. Applicants’ mark and Opposer’s mark are different in spelling.
20. Applicants’ mark and Opposer’s markcreatedifferent commercial impressions.
21. Opposer’s mark contains the word“FIRST” not present in Applicant’s mark.
22. Applicant’s mark contains the word“ONE’ not present in Opposer’s mark.
23. Applicant’s mark contains the word“PRIMARY’ not present in Opposer’s mark.
24. Applicant’s application contains a disclaimer of “PRIMARY CARE.”
25. “PRIMARY CARE” is a common phrase in relation toproviding medical
services.
26. “CARE” is registered in numerous trademarks for health related goods and
services not owned by Opposer.
27. “FIRST” is registered in numerous trademarks for health related goods and
services not owned by Opposer.
28. “CARE” is used in commerce by third parties as part of numerous trademarks for
health related goods and services not owned by Opposer.
29. “FIRST” is used in commerce by third parties as part of numerous trademarks for
health related goods and services not owned by Opposer.
30. Applicant’s services and Opposer’s services are not marketedthough the same
channels of trade.
31. Applicant does not provide insurance services.
Opposition No. 91189782: ANSWER TO NOTICE OF OPPOSITION p.4
32. Applicant’s mark and Opposer’s mark are not likely to cause confusion, mistake
or deception to purchasers as to the source of Opposer’s goods or services.
33. Applicant’s mark and Opposer’s mark are notlikely to disparage or falsely
suggest a trade connection between Opposer and Applicant.
Applicant hereby appoints Erik M. Pelton, a member of the Bars of the State of New
Jersey and the District of Columbia, and Christopher Shiplett, a member of the Barof the
Commonwealth of Virginia, at the firm of:
Erik M. Pelton & Associates, PLLCPO Box 100637Arlington, Virginia 22210TEL: (703) 525-8009FAX: (703) [email protected]
to act as attorneys in the matter of the opposition identified above,to prosecute said opposition,
to transact all business in the Patent and Trademark Office, and in the United States courts
connected with the opposition, to sign its name to all papers which are hereinafter to be filed in
connection therewith, and to receive all communications relating to the same.
WHEREFORE, Applicant prays that the Trademark Trial and Appeal Boarddeny the
Opposition and permit registration of Applicant’s proposed mark in Application Serial Number
77452208in the United States Patent andTrademark Office.
Opposition No. 91189782: ANSWER TO NOTICE OF OPPOSITION p.5
Dated this22ndday ofMay, 2009.
Erik M. PeltonERIK M. PELTON & ASSOCIATES, PLLCPO Box 100637Arlington, Virginia 22210TEL: (703) 525-8009FAX: (703) 525-8089
Attorney for Applicant
Opposition No. 91189782: ANSWER TO NOTICE OF OPPOSITION p.6
CERTIFICATE OF SERVICE
I hereby certify thata trueand accurate copy of ANSWER TO NOTICE OFOPPOSITION has been served on the following by delivering said copy onMay 22, 2009, viaFirst Class Mail, postage prepaid, to counsel for Opposer at the following address:
Barth X. deRosaDickinson Wright PLLC1875 Eye Street, N.W., Suite 1200Washington, DC 20006
By:Erik M. Pelton, Esq.
