This Opinion is Not a
`Precedent of the TTAB
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`
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`
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` Mailed: August 25, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Trademark Trial and Appeal Board
`
`Multimedia Healthcare Communications, LLC
`
`v.
`
`HMP Communications, LLC
`
`Opposition No. 91253401 (Parent)1
`
`Cancellation No. 92073117
`
`Richard H. Brown and Jeremy Blackowicz of Day Pitney LLP, for
`Plaintiff Multimedia Healthcare Communications, LLC.
`
`Michael R. Justus and Kristin D. Lockhart, of Katten Muchin
`Rosenman LLP, for Defendant HMP Communications, LLC.
`_____
`
`Before Goodman, Hudis, and Johnson,
`Administrative Trademark Judges.
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`1 In a September 16, 2020 order, located at 12 TTABVUE, the Board consolidated Opposition No.
`91253401 and Cancellation No. 92073117, both of which involve the mark CONSULTANTLIVE
`(in standard characters). Unless otherwise indicated, we cite to the record in Opposition No.
`91253401.
`
`Citations to the record are to the publicly available documents in TTABVUE, the Board’s
`electronic docketing system. See, e.g., Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6
`(TTAB 2014). The number preceding “TTABVUE” corresponds to the docket entry number; the
`number(s) following “TTABVUE” refer to the page number(s) of that particular docket entry, if
`applicable.
`
`Citations to application and registration records are to pages in the Trademark Status and
`Document Retrieval (TSDR) database of the United States Patent and Trademark Office
`(USPTO).
`
`

`

`Opposition No. 91253401
`Cancellation No. 92073117
`
`
`Opinion by Johnson, Administrative Trademark Judge:
`
`
`HMP Communications, LLC (“Defendant” or “HMP”) seeks to register the mark
`
`CONSULTANTLIVE, in standard characters, on the Principal Register for “Educational
`
`services, namely, conducting and organizing classes, seminars, conferences and
`
`workshops in the fields of healthcare, medicine, nutrition and wellness, as well as the
`
`distribution of course materials in connection therewith; Providing a website featuring
`
`online non-downloadable videos in the fields of healthcare, medicine, nutrition and
`
`wellness,” in International Class 41.2
`
`Defendant also owns a registration for the mark CONSULTANTLIVE, in standard
`
`characters, on the Supplemental Register for “Providing online information in the fields
`
`of healthcare, medicine, nutrition and wellness,” in International Class 44.3 Collectively,
`
`Defendant’s application and registration are referred to as “Defendant’s marks.”
`
`Multimedia Healthcare Communications, LLC (“Plaintiff” or “MMHC”) filed a Notice
`
`of Opposition4 against the registration of Defendant’s application and a Petition to
`
`Cancel5 Defendant’s registration. As grounds for opposition and cancellation, Plaintiff
`
`pleads prior common law use of the mark CONSULTANTLIVE in connection with
`
`“providing information, education, news and resources in the fields of healthcare,
`
`
`2 Application Serial No. 88310006 was filed on February 21, 2019, under Section 1(b) of the
`Trademark Act, 15 U.S.C § 1051(b), based upon Applicant’s allegation of a bona fide intent to use
`the mark in commerce. This application is the subject of Opposition No. 91253401.
`
`3 Registration No. 5923072 was registered on the Supplemental Register on November 26, 2019,
`based on application Serial No. 88310010, filed February 21, 2019. This registration is the subject
`of Cancellation No. 92073117.
`
`4 Opposition No. 91253401, 1 TTABVUE.
`
`5 Cancellation No. 92073117, 1 TTABVUE.
`
`
`
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`

`

`Opposition No. 91253401
`Cancellation No. 92073117
`
`medicine, treatment, and wellness,” and likelihood of confusion pursuant to Section 2(d)
`
`of the Trademark Act. We note that Plaintiff refers to the CONSULTANTLIVE online
`
`publication and the CONSULTANTLIVE.COM archive and website collectively as the
`
`“CONSULTANTLIVE.COM mark.” (1 TTABVUE 4 ¶ 4). For simplicity, we will refer to
`
`all three as “the CONSULTANTLIVE marks” or “Plaintiff’s CONSULTANTLIVE marks,”
`
`unless indicated otherwise.
`
`In its answer to the Notice of Opposition,6 HMP denies the salient allegations of the
`
`notice. In its answer to the Petition for Cancellation,7 HMP denies the salient allegations
`
`of the petition. Defendant asserted a number of affirmative defenses in its answers, which
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`we discuss below.
`
`HMP’s Affirmative Defenses
`
`HMP asserts essentially the same purported affirmative defenses in both of its
`
`answers. The first “affirmative defense,” that the notice and petition fail to state a claim
`
`upon which relief can be granted,8 is not a true affirmative defense. Sabhnani v. Mirage
`
`Brands, LLC, 2021 USPQ2d 1241, at *4 n.5 (TTAB 2021) (citing U.S. Olympic Comm. v.
`
`Tempting Brands Neth. B.V., 2021 USPQ2d 164, at *4 (TTAB 2021)). Since HMP did not
`
`move to dismiss MMHC’s pleadings, we give this defense no further consideration. For
`
`other “affirmative defenses,” HMP asserts a likelihood of confusion between its
`
`
`6 Answer and Affirmative Defenses to Notice of Opposition, Opp. No. 91253401 (“Opp. Answer”),
`4 TTABVUE.
`
`7 Answer and Affirmative Defenses to Petition for Cancellation, Canc. No. 92073117
`(“Pet. Answer”), 4 TTABVUE.
`
`8 Opp. Answer, 4 TTABVUE 7 ¶ 1; Pet. Answer, 4 TTABVUE 7 ¶ 1.
`
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`

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`Opposition No. 91253401
`Cancellation No. 92073117
`
`CONSULTANT mark and Plaintiff’s CONSULTANTLIVE marks,9 and that Plaintiff “has
`
`not suffered, and is not likely to suffer, any damage or injury as a result of the registration
`
`sought herein, nor from any other act of Registrant.”10 These assertions are merely
`
`amplifications of HMP’s denial of a likelihood of confusion of its mark with Plaintiff’s
`
`CONSULTANTLIVE marks, which is permissible, but we do not treat the assertions as
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`separate defenses as such. See Sabhnani, 2021 USPQ2d 1241, at *4 n.5.
`
`HMP’s reservation of rights to amend11 the Affirmative Defenses is improper under
`
`the Federal Rules of Civil Procedure since such a reservation would not give Plaintiff fair
`
`notice of such defenses. Philanthropist.com, Inc. v. Gen. Conf. Corp. of Seventh-Day
`
`Adventists, 2021 USPQ2d 643, at *4 n.6 (TTAB 2021), aff’d mem., 2022 WL 3147202
`
`(Fed. Cir. Aug. 8, 2022); see also FDIC v. Mahajan, 923 F. Supp. 2d 1133, 1141
`
`(N.D. Ill. 2013) (“[A]ffirmative defenses that purport to reserve the right to add
`
`affirmative defenses at a later date … are stricken because they are improper reservations
`
`under the Federal Rules.”).
`
`HMP also asserted:
`
`• Lack of ownership of the CONSULTANTLIVE mark;12
`
`• Abandonment of the CONSULTANTLIVE.COM mark;13
`
`• Failure to renew the CONSULTANTLIVE.COM registration;14
`
`
`9 Opp. Answer, 4 TTABVUE 9 ¶¶ 17-21; Pet. Answer, 4 TTABVUE 9-10 ¶¶ 17-21.
`
`10 Opp. Answer, 4 TTABVUE 10 ¶ 22; Pet. Answer, 4 TTABVUE 10 ¶ 22.
`
`11 Opp. Answer, 4 TTABVUE 10 ¶ 25; Pet. Answer, 4 TTABVUE 11 ¶ 24.
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`12 Opp. Answer, 4 TTABVUE 7 ¶ 2; Pet. Answer, 4 TTABVUE 7 ¶ 2.
`
`13 Opp. Answer, 4 TTABVUE 7 ¶ 4; Pet. Answer, 4 TTABVUE 7 ¶ 4.
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`14 Opp. Answer, 4 TTABVUE 8 ¶ 8; Pet. Answer, 4 TTABVUE 8 ¶ 8.
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`Opposition No. 91253401
`Cancellation No. 92073117
`
`
`• Priority in the mark CONSULTANT;15 and
`
`• Licensee estoppel.16
`
`HMP’s defense that MMHC failed to renew the CONSULTANTLIVE.COM registration,
`
`which we construe as a form of estoppel, cannot serve as an affirmative defense since
`
`rights may subsist in the unregistered CONSULTANTLIVE.COM mark. See, e.g.,
`
`Bonomo Culture Inst., Inc. v. Mini-Gym, Inc., 188 USPQ 415, 416 (TTAB 1975) (citations
`
`omitted) (where respondent asserted, as an affirmative defense, that petitioner was
`
`estopped from challenging respondent’s right of registration because petitioner failed to
`
`renew its own expired registration, and where petitioner asserted that respondent had
`
`notice of the expired registration, “genuine issue concerning priority of use and likelihood
`
`of confusion existed” even though petitioner failed to renew its registration).
`
`HMP also includes a “catch-all” affirmative defense that MMHC’s notice and petition
`
`“should be denied because of the legal doctrines of unclean hands, laches, estoppel,
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`acquiescence, fraud, mistake, the Morehouse defense, or prior judgment.”17 HMP did not
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`pursue lack of ownership, unclean hands, laches, fraud, mistake, or prior judgment in its
`
`trial brief, so we deem them all waived. Alcatraz Media Inc. v. Chesapeake Marine Tours
`
`Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013) (affirmative defense not argued in brief
`
`deemed waived); NT-MDT LLC v. Kozodaeva, 2021 USPQ2d 433, at *5 n.8 (TTAB 2021)
`
`(citing Alcatraz Media).
`
`
`15 Opp. Answer, 4 TTABVUE 8 ¶ 13; Pet. Answer, 4 TTABVUE 9 ¶ 13.
`
`16 Opp. Answer, 4 TTABVUE 9 ¶¶ 14-16; Pet. Answer, 4 TTABVUE 9 ¶¶ 14-16.
`
`17 Opp. Answer, 4 TTABVUE 10 ¶ 23; Pet. Answer, 4 TTABVUE 10 ¶ 23.
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`

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`Opposition No. 91253401
`Cancellation No. 92073117
`
`
`The Morehouse defense is “an equitable defense, to the effect that if the opposer cannot
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`be further injured because there already exists an injurious registration, the opposer
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`cannot object to an additional registration that does not add to the injury.” O–M Bread,
`
`Inc. v. U.S. Olympic Comm., 65 F.3d 933, 36 USPQ2d 1041, 1045 (Fed. Cir. 1995). The
`
`party asserting a Morehouse defense must show that it “has an existing registration of
`
`the same mark for the same goods.” Morehouse Mfg. Corp. v. J. Strickland & Co.,
`
`407 F.2d 881, 160 USPQ 715, 717 (CCPA 1969).
`
`The identification of services for HMP’s CONSULTANTLIVE registration is for
`
`“providing online information in the fields of healthcare, medicine, nutrition and
`
`wellness.” These services are not identical to, or substantially the same as, the
`
`“educational services, namely, conducting and organizing classes, seminars, conferences
`
`and workshops in the fields of healthcare, medicine, nutrition and wellness, as well as the
`
`distribution of course materials in connection therewith,” identified in HMP’s pending
`
`application for CONSULTANTLIVE.
`
`Where the services in the opposed application “are substantially different [services]
`
`from those upon which … [Defendant HMP] has [a] previous registration[ ] … it cannot
`
`be said here that there would be no added damage to opposer from … [Defendant’s]
`
`proposed registration.” Jackes-Evans Mfg. Co. v. Jaybee Mfg. Corp., 481 F.2d 1342,
`
`179 USPQ 81, 83 (CCPA 1973) (emphasis added). Accordingly, the Morehouse defense is
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`inapplicable here.
`
`Finally, as to its pending CONSULTANTLIVE application, HMP asserts that it is “at
`
`least entitled to a registration with a particular restriction as deemed relevant by the
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`
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`- 6 -
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`

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`Opposition No. 91253401
`Cancellation No. 92073117
`
`Board.”18 We construe this as a vague request to amend Defendant’s pending application.
`
`See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 514.03 (2022)
`
`(Motion to Amend Application or Registration); see also TBMP §§ 311.02 (Affirmative
`
`Defenses) and 309.03(d) (Remedy Under Trademark Act § 18 (Partial Opposition or
`
`Partial Cancellation)). However, since HMP failed to specify its requested restriction with
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`particularity in its answer or through a timely motion to amend, and failed to provide fair
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`notice of the request, we decline to consider its request. ProQuest Info. and Learning Co.
`
`v. Island, 83 USPQ2d 1351, 1353 (TTAB 2007) (applicant’s proposed restriction to
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`application denied; Board will only exercise this authority where the issue of restriction
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`has been raised in either the pleadings or by motion or has been tried by the parties, and
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`the possible restriction has been stated with precision); Eurostar Inc. v. “Euro-Star”
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`Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1272 (TTAB 1994) (party that seeks to
`
`restrict a registration or application should state with as much precision as possible the
`
`restriction it seeks, so that the issue is properly framed for trial); Space Base Inc. v. Stadis
`
`Corp., 17 USPQ2d 1216, 1218 (TTAB 1990) (counterclaim that opposer’s registration
`
`should be amended “to accurately describe the services” was vague).
`
`The consolidated case is fully briefed by the parties. To prevail, Plaintiff must prove
`
`its claims by a preponderance of the evidence. See Jansen Enters., Inc. v. Rind,
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`85 USPQ2d 1104, 1107 (TTAB 2007). Having considered the evidentiary record, Plaintiff’s
`
`arguments, and applicable authorities, we find that Plaintiff has carried this burden with
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`respect to its priority claim. We also find a likelihood of confusion between Plaintiff’s and
`
`
`18 Opp. Answer, 4 TTABVUE 10 ¶ 24.
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`

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`Opposition No. 91253401
`Cancellation No. 92073117
`
`Defendant’s marks. We therefore sustain the Opposition and grant the Petition for
`
`Cancellation.
`
`I.
`
`Evidentiary Objections
`
`
`Before proceeding to the merits of these consolidated proceedings, we address
`
`evidentiary issues generally. Defendant makes several objections19 to Plaintiff’s evidence
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`based on the parol evidence rule, relevance, probativeness, and hearsay. In response,
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`Plaintiff argues that all of the evidence is relevant and should be considered.
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`(50 TTABVUE 26- 31). Plaintiff also makes several objections to evidence submitted by
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`Defendant. (See 48 TTABVUE 15 n.1, 23-25, 33-34).
`
`“The Board is entitled to weigh the evidence and has the discretion on how it considers
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`evidentiary objections, especially in cases where numerous objections have been lodged
`
`or the objections are not outcome determinative.” TBMP § 707.01. Keeping this in mind,
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`we will accord the evidence and testimony to which the parties object whatever probative
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`value it has, if any. See The Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC,
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`2020 USPQ2d 10914, at *4 (TTAB 2020) (citations omitted), aff’d in part and vacated in
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`part, 17 F.4th 129, 2021 USPQ2d 1069 (Fed. Cir. 2021); see also RxD Media, LLC v.
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`IP Application Dev. LLC, 125 USPQ2d 1801, 1804 (TTAB 2018) (“the Board is capable of
`
`weighing the relevance and strength or weakness of the objected to testimony and
`
`evidence, including any inherent limitations”), aff’d, 377 F. Supp. 3d 588 (E.D. Va. 2019),
`
`aff’d, 986 F.3d 361, 2021 USPQ2d 81 (4th Cir. 2021); Kohler Co. v. Honda Giken Kogyo
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`K.K., 125 USPQ2d 1468, 1478 (TTAB 2017) (where parties devoted more than 30 pages of
`
`
`19 Applicant/Registrant HMP Communications, LLC’s Trial Brief (“Defendant’s Brief”), Exhibit A,
`49 TTABVUE 56-59.
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`

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`Opposition No. 91253401
`Cancellation No. 92073117
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`their briefing at final hearing to numerous detailed evidentiary objections, Board
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`exercised discretion to rule explicitly only on major objections).
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`II.
`
`The Evidentiary Record
`
`
`The record includes the pleadings, and pursuant to Trademark Rule 2.122(b),
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`37 C.F.R. § 2.122(b), Defendant HMP’s prosecution files for its CONSULTANTLIVE
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`application and registration, respectively. The parties further introduced the following
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`evidence listed below.
`
`A. Plaintiff’s Testimony and Evidence
`
`
`
`1.
`
`Testimony Declaration of Marcy Holeton (“Holeton Decl.”), publishing/media
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`industry executive, and former Senior Vice President & General Manager of UBM Medica,
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`LLC’s (“UBM Medica”). UBM Medica, a subsidiary of UBM Life Sciences, is Plaintiff’s
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`predecessor-in-interest. (20 TTABVUE). Holeton managed the “ConsultantLive” online
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`publication and community from 2007 until she left UBM Medica in May 2011.
`
`(20 TTABVUE 6 ¶ 11).
`
`2.
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`Testimony Declaration of Silas Inman with exhibits (“Inman Decl.”), Senior
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`Vice President, Content of MJH Life Sciences, LLC (“MJH Life Sciences”). Plaintiff is a
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`subsidiary of MJH Life Sciences.
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`(21 TTABVUE).
`
`Inman manages
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`the
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`CONSULTANTLIVE healthcare multimedia platform. (21 TTABVUE 5 ¶ 4).
`
`3.
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`Testimony Declaration of Neil Glasser with exhibits (“Glasser Decl.”), Chief
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`Financial Officer of MJH Life Sciences. (22 TTABVUE).
`
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`Opposition No. 91253401
`Cancellation No. 92073117
`
`
`4.
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`Plaintiff MMHC’s First Notice of Reliance (“NoR”) (23 TTABVUE) on
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`webpages saved from the Internet Archive (located at web.archive.org), captured and
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`accessed on various dates (see Exs. 1-6, 23 TTABVUE 7-33).
`
`5.
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`Plaintiff MMHC’s Second Notice of Reliance (24 TTABVUE) on printouts
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`from various webpages saved from the Internet Archive and other websites, captured and
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`accessed on various dates (see Exs. 7-23, 24 TTABVUE 10-66).
`
`6.
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`Plaintiff MMHC’s Third Notice of Reliance (25 TTABVUE) on printouts from
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`various webpages captured and accessed on various dates (see Exs. 24-26, 25 TTABVUE
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`5-12).
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`7.
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`Plaintiff MMHC’s Notice of Reliance on Official Records (26 TTABVUE),
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`consisting of the following:
`
`a. A copy of portions of the USPTO trademark registration file for cancelled
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`Registration No. 3,153,162 (for CONSULTANTLIVE.COM), and specifically pp.
`
`1- 19, downloaded from the USPTO Trademark Status and Document Retrieval
`
`(TSDR) database on November 19, 2020 (attached as Exhibit 27) (26 TTABVUE
`
`5-24).
`
`b. A copy of a Trademark Assignment for CONSULTANT (stylized word mark),
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`CONSULTANT FOR PEDIATRICIANS (two marks), and WHAT’S YOUR
`
`DIAGNOSIS, entered into by and between UBM Medica, LLC and HMP
`
`Communications, LLC on April 15, 2011 downloaded from the TSDR database on
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`November 19, 2020 (attached as Exhibit 28) (26 TTABVUE 25-32).
`
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`

`Opposition No. 91253401
`Cancellation No. 92073117
`
`
`c. A copy of a Trademark Assignment for multiple marks entered into by and
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`among Advanstar Communications Inc.; ENK International, LLC; Healthcare
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`Holdings, Inc.; Informa Exhibitions, LLC; Maypond Limited; Miller Freeman
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`Acquisition Corp.; UBM LLC; UBM Medica Group LLC; UBM Medica LLC; UBM
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`(UK) Limited; UBM Canon LLC; and MultiMedia Healthcare Communications
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`LLC on December 19, 2018, downloaded from the TSDR database on November
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`19, 2020 (attached as Exhibit 29) (26 TTABVUE 33-51).
`
`8.
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`Plaintiff MMHC’s Notice of Reliance on Discovery Materials (27 TTABVUE),
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`consisting of the following:
`
`a. HMP’s Supplemental Response
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`to Interrogatory No. 5
`
`(Ex. 30)
`
`(27 TTABVUE 4-10).
`
`b. HMP’s Responses to MMHC’s Requests for Admission, Nos. 2, 20, 53 and 61
`
`(Ex. 31) (27 TTABVUE 11-20).
`
`c. Deposition Testimony of HMP Pursuant to Fed. R. Civ. P. 30(b)(6) through
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`David DePinho, Defendant’s President, pp. 1-6, 59-61, 64, 78-81, 99-100; and two
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`exhibits to the HMP Rule 30(b)(6) deposition: Ex. A (also referred to as Ex. 1 in
`
`the deposition) and Ex. 4 (Ex. 32) (27 TTABVUE 21-57).
`
`B. Defendant’s Testimony and Evidence
`
`
`
`1.
`
`The Transcript of Oral Cross-Examination Testimony of Marcy Holeton
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`(“Holeton Dep.”) with exhibits (34 TTABVUE).
`
`
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`Opposition No. 91253401
`Cancellation No. 92073117
`
`
`2.
`
`Applicant’s First Notice of Reliance (35 TTABVUE) on copies of information
`
`from the USPTO’s TSDR database records showing the current status and title of the
`
`following registrations:
`
`Registration No. 737,576 for the mark CONSULTANT (attached as Ex. 1)
`(35 TTABVUE 5-17);
`
`for the mark CONSULTANT FOR
`Registration No. 3,138,227
`PEDIATRICIANS (attached as Ex. 2) (35 TTABVUE 18-24);
`
`Registration No. 6,034,988 for the mark CONSULTANT360 (attached as
`Ex. 3) (35 TTABVUE 25-28); and
`
`Registration No. 6,254,322 for the mark CONSULTANT (attached as Ex.
`4) (35 TTABVUE 29-32).
`
`3.
`
`Applicant’s Second Notice of Reliance (36 TTABVUE) on a copy of a
`
`Trademark Assignment recorded with the USPTO on May 13, 2011 at Reel 4541/Frame
`
`0728 for the mark CONSULTANT (stylized word mark), the mark CONSULTANT FOR
`
`PEDIATRICIANS (two marks), and the mark WHAT’S YOUR DIAGNOSIS (attached as
`
`Ex. 9) (36 TTABVUE 82-89); and copies of portions of the file histories for the following
`
`registrations:
`
`Registration No. 737,576 for the mark CONSULTANT (attached as Ex. 5)
`(36 TTABVUE 6-20);
`
`for the mark CONSULTANT FOR
`Registration No. 3,138,227
`PEDIATRICIANS (attached as Ex. 6) (36 TTABVUE 21-36);
`
`Registration No. 6,034,988 for the mark CONSULTANT360 (attached as
`Ex. 7) (36 TTABVUE 37-69); and
`
`Registration No. 6,254,322 for the mark CONSULTANT (attached as Ex.
`8) (36 TTABVUE 70-81).
`
`
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`Opposition No. 91253401
`Cancellation No. 92073117
`
`
`4.
`
`Applicant’s Third Notice of Reliance (37 TTABVUE) on copies of information
`
`from TSDR database records showing the current status and title of the following
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`registrations:
`
`Registration No. 6,251,846 for the mark THE MOTION OF GRATITUDE
`(attached as Ex. 10) (37 TTABVUE 10-15);
`
`Registration No. 6,240,264 for the mark PRIME HEALTH DAILY
`(attached as Ex .11) (37 TTABVUE 16-21);
`
`Registration No. 6,254,005 for the mark FSMTB (attached as Ex. 12)
`(37 TTABVUE 22-28);
`
`Registration No. 6,248,336 for the mark THE CODING INSTITUTE
`(attached as Ex. 13) (37 TTABVUE 29-36);
`
`Registration No. 6,242,462 for the mark ENLIGHTEN (attached as Ex.
`14) (37 TTABVUE 37-43);
`
`Registration No. 6,252,108 for the mark AMERICAN PSYCHOLOGICAL
`ASSOCIATION (attached as Ex. 15) (37 TTABVUE 44-51);
`
`Registration No. 6,262,627 for the mark HEMPSPERT (attached as Ex.
`16) (37 TTABVUE 52-58);
`
`Registration No. 6,252,427 for the mark MSAA IMPROVING LIVES
`TODAY! MULTIPLE SCLEROSIS ASSOCIATION OF AMERICA
`(attached as Ex. 17) (37 TTABVUE 59-64);
`
`Registration No. 6,218,134 for the mark AESTHETIC AUTHORITY
`(attached as Ex. 18) (37 TTABVUE 65-70);
`
`Registration No. 6,254,878 for the mark START WHERE YOU ARE
`WEIGHT LOSS (attached as Ex. 19) (37 TTABVUE 71-75);
`
`Registration No. 6,082,080 for the mark STORYWELL (attached as Ex.
`20) (37 TTABVUE 76-81);
`
`Registration No. 6,253,093 for the mark GRATOSIS (attached as Ex. 21)
`(37 TTABVUE 82-87);
`
`Registration No. 6,258,390 for the mark GD GREY DANCE OF LOVE
`(attached as Ex. 22) (37 TTABVUE 88-96);
`
`Registration No. 6,239,399 for the mark TBJ (attached as Ex. 23)
`(37 TTABVUE 97-101);
`
`
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`

`

`Opposition No. 91253401
`Cancellation No. 92073117
`
`
`Registration No. 6,244,253 for the mark IQ INSIGNIAM QUARTERLY
`(attached as Ex. 24) (37 TTABVUE 102-08);
`
`Registration No. 6,249,354 for the mark I AM VITALIZED (attached as
`Ex. 25) (37 TTABVUE 109-15);
`
`Registration No. 6,260,146 for the mark STEFANIE GASS (attached as
`Ex. 26) (37 TTABVUE 116-20);
`
`Registration No. 6,250,157 for the mark MOD-R (attached as Ex. 27)
`(37 TTABVUE 121-25);
`
`Registration No. 6,250,937 for the mark CROSSOVER GLOBAL
`(attached as Ex. 28) (37 TTABVUE 126-31);
`
`Registration No. 6,260,681 for the mark BOBBY FLAY (attached as Ex.
`29) (37 TTABVUE 132-37);
`
`Registration No. 6,261,613 for the mark THE REAL DEAL (attached as
`Ex. 30) (37 TTABVUE 138-43); and
`
`Registration No. 6,253,291 for the mark PARTNERSHIP TO FIGHT
`INFECTIOUS DISEASE (attached as Ex. 31) (37 TTABVUE 144-49).
`
`5.
`
`Applicant’s Fourth Notice of Reliance (38 TTABVUE) on copies of excerpts
`
`from:
`
`a. Opposer Multimedia Healthcare Communications, LLC’s Responses to
`
`Applicant HMP Communications, LLC’s First Set of Interrogatories, Nos. 2, 4-7,
`
`9-14 and accompanying verification (attached as Ex. 32) (38 TTABVUE 6-20).
`
`b. Opposer Multimedia Healthcare Communications, LLC’s Responses to
`
`Applicant HMP Communications, LLC’s Second Set of Requests For Admission
`
`Nos. 23 and 30-31 (attached as Ex. 33) (38 TTABVUE 21-27).
`
`c. Opposer Multimedia Healthcare Communications, LLC’s Responses to
`
`Applicant HMP Communications, LLC’s Second Set of Requests For Production
`
`
`
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`

`

`Opposition No. 91253401
`Cancellation No. 92073117
`
`
`of Documents and Things Nos. 27-29, 31-35, and 37-40 (attached as Ex. 34) (38
`
`TTABVUE 28-41).
`
`d. Opposer Multimedia Healthcare Communications, LLC’s Responses to
`
`Applicant HMP Communications, LLC’s Third Set of Requests For Admission
`
`Nos. 32-36, 38, and 40-42 (attached as Ex. 35) (38 TTABVUE 42-50).
`
`e. Opposer Multimedia Healthcare Communications, LLC’s Responses to
`
`Applicant HMP Communications, LLC’s Third Set of Requests For Production of
`
`Documents and Things Nos. 41-42 (attached as Ex. 36) (38 TTABVUE 51-57).
`
`6.
`
`Applicant’s Fifth Notice of Reliance (39 TTABVUE) on excerpts and
`
`corresponding exhibits from the April 9, 2021 FED. R. CIV. P 30(b)(6) discovery deposition
`
`of Plaintiff/Opposer Multimedia Healthcare Communications, LLC, through its officer
`
`and designee Neil Glasser (“Glasser Dep.”) (attached as Exhibit 37).
`
`7.
`
`Applicant’s Sixth Notice of Reliance (40 TTABVUE) on printouts from
`
`various webpages saved from the Internet Archive and other websites, captured and
`
`accessed on various dates (Exs. 38-55) (40 TTABVUE 8-62).
`
`8.
`
`Testimony Declaration of Christopher Ciraulo
`
`(“Ciraulo Decl.”)
`
`(41 TTABVUE), Chief Executive Officer (CEO), President, and Group Publisher at
`
`International Healthcare Media LLC, a healthcare media company. From April 2008 to
`
`June 2011, Ciraulo was Vice President & Group Publisher of Defendant HMP’s Managed
`
`Care – Long Term Care Division, and from June 2011 to June 2017, Ciraulo was HMP’s
`
`Vice President & Group Publisher of Defendant HMP’s Life Sciences Division.
`
`
`
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`

`

`Opposition No. 91253401
`Cancellation No. 92073117
`
`
`9.
`
`Testimony Declaration of David DePinho with exhibits (“DePinho Decl.”)
`
`(42 TTABVUE), Defendant’s President.
`
`10. Cross-Examination Testimony Deposition of Christopher Ciraulo with
`
`exhibits (“Ciraulo Cross Dep.”) (46 TTABVUE).
`
`11. Cross-Examination Testimony Deposition of David A. DePinho with exhibits
`
`(“DePinho Cross Dep.”) (47 TTABVUE).
`
`III. The Parties and their Marks
`
`
` Plaintiff
`
`
`Plaintiff Multimedia Healthcare Communications, LLC (“MMHC”), a wholly-owned
`
`subsidiary of MJH Life Sciences LLC (“MJH”), is a New Jersey limited liability company
`
`with offices in Cranbury, New Jersey. (19 TTABVUE 2 ¶1). Plaintiff MMHC and its
`
`parent company, MJH, are owned by Mr. Michael J. Hennessy, Sr. (1 TTABVUE 5 ¶ 15;
`
`22 TTABVUE 5 ¶ 5). Plaintiff alleges that it obtained rights to the CONSULTANTLIVE
`
`online publication, as well as the CONSULTANTLIVE.COM mark and domain name, by
`
`acquisition. (1 TTABVUE 4 ¶ 4; 22 TTABVUE 181).
`
`In particular, Plaintiff alleges that in early 2000, an online medical resource, hosted
`
`at www.consultantlive.com, was
`
`launched.
`
`(1 TTABVUE 4 ¶ 7). There, the
`
`CONSULTANTLIVE mark was “associated with the leading online community for
`
`primary care clinicians, providing news, education, and industry updates for the
`
`community of healthcare professionals practicing in primary care environments.”
`
`(1 TTABVUE 4 ¶ 7).
`
`
`
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`

`Opposition No. 91253401
`Cancellation No. 92073117
`
`
`On or about June 23, 2004, CMP Healthcare Media LLC (a predecessor company of
`
`UBM Medica) allegedly acquired the CONSULTANTLIVE marks and goodwill from the
`
`successors of Cliggott Publishing.20 (1 TTABVUE 4 ¶ 8; 39 TTABVUE 137). On January
`
`31, 2019, the CONSULTANTLIVE.COM mark and goodwill was assigned from UBM
`
`Medica (and other sellers) to Plaintiff MMHC. (1 TTABVUE 5 ¶ 11, 12). The assignment
`
`was recorded with the USPTO on February 1, 2019 at Reel 6548/Frame 0595.
`
`(1 TTABVUE 5 ¶ 11). On August 1, 2019, Plaintiff MMHC began posting new content
`
`“comprised of healthcare and medical news, information, and educational materials using
`
`the CONSULTANTLIVE.COM mark” and the CONSULTANTLIVE mark to the
`
`consultantlive.com website. (1 TTABVUE 5 ¶14).
`
` Defendant
`
`
`
`As noted earlier, Defendant HMP Communications, LLC (“HMP”), a Delaware limited
`
`liability company with offices in Malvern, Pennsylvania (19 TTABVUE 3 ¶ 3), is the owner
`
`of Application Serial Number 88310006,
`
`for
`
`the mark CONSULTANTLIVE
`
`(19 TTABVUE 3 ¶ 4). HMP also owns a registration for the mark CONSULTANTLIVE,
`
`Supplemental Register Number 5923072. (19 TTABVUE 3 ¶ 5). The CEO of HMP is Jeff
`
`Hennessy, the brother of Plaintiff’s owner, Michael Hennessy, Sr. (22 TTABVUE 5 ¶ 5).
`
`
`20 Plaintiff (and at least one witness) refers to “Cliggott” or “Cliggott Publishing” as the creator of
`the CONSULTANTLIVE.COM mark. (1 TTABVUE 4 ¶ 8; 39 TTABVUE 137). However, the TSDR
`record for the mark, Registration Number 3,153,162 (cancelled), shows CMP Healthcare Media
`LLC as the applicant and owner of the CONSULTANTLIVE.COM mark at registration.
`
`the
`eventually,
`changes, UBM Medica acquired,
`of name
`series
`Through a
`CONSULTANTLIVE.COM mark from the assignees and successors of Cliggott Publishing.
`See Reg. No. 3,153,162, TSDR Reel 003668/Frame 0573 and Reel 04142/Frame 0203. For
`continuity, we will refer to UBM Medica’s predecessor-in-interest as “Cliggott” or “Cliggott
`Publishing.”
`
`
`
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`

`

`Opposition No. 91253401
`Cancellation No. 92073117
`
`HMP and MMHC are competitors in the medical and healthcare communications field.
`
`(22 TTABVUE 5 ¶ 5).
`
` Stipulations of Fact
`
`
`
`Plaintiff and Defendant stipulated to the following facts pertaining to their respective
`
`uses of their CONSULTANTLIVE marks:
`
`• “Opposer [Plaintiff] uses the trademark CONSULTANTLIVE in connection with a
`
`website offering information, news, education, videos, and industry updates in the
`
`fields of medicine, wellness, and healthcare.” (19 TTABVUE 3 ¶ 2).
`
`• “Applicant [Defendant] has used its CONSULTANTLIVE trademark in connection
`
`with a website offering information in the fields of healthcare, medicine, nutrition,
`
`and wellness and also intends to use its CONSULTANTLIVE trademark in
`
`connection with educational services and non-downloadable videos in the fields of
`
`healthcare, medicine, nutrition and wellness.” (19 TTABVUE 3 ¶ 6).
`
`• “Opposer’s
`
`[Plaintiff’s]
`
`trademark CONSULTANTLIVE and Applicant’s
`
`[Defendant’s] trademark CONSULTANTLIVE are identical in appearance, sound,
`
`meaning, and connotation.” (19 TTABVUE 3 ¶ 7).
`
`• “Opposer’s [Plaintiff’s] Services and Applicant’s [Defendant’s] Services are
`
`identical in nature.” (19 TTABVUE 3 ¶ 8).
`
`• “Opposer’s [Plaintiff’s] Services and Applicant’s [Defendant’s] Services are/would
`
`be rendered to the same consumers in the fields of medicine, wellness, and
`
`healthcare.” (19 TTABVUE 3 ¶ 9).
`
`
`
`
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`

`

`Opposition No. 91253401
`Cancellation No. 92073117
`
`IV. Entitlement to a Statutory Cause of Action21
`
`Entitlement to a statutory cause of action, formerly referred to as “standing” by the
`
`Federal Circuit and the Board, is a requirement in every inter partes case. Australian
`
`Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837,
`
`at *3 (Fed. Cir. 2020), cert. denied, 142 S. Ct. 82 (2021) (citing Lexmark Int’l, Inc. v. Static
`
`Control Components, Inc., 572 U.S. 118, 125-26 (2014)). A party in the position of plaintiff
`
`may oppose registration of a mark when doing so is within its zone of interests and it has
`
`a reasonable belief in damage that is proximately caused by registration of the mark.
`
`Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *6-7
`
`(Fed. Cir. 2020), cert. denied, 141 S. Ct. 2671 (2021) (stating that the test in Lexmark is
`
`met by demonstrating: (1) a real interest in opposing or cancelling a registration of a
`
`mark, which satisfies the zone-of-interests requirement; and (2) a reasonable belief in
`
`damage proximately caused by registration of the mark).
`
`Because Plaintiff properly introduced evidence of prior common law use of its
`
`CONSULTANTLIVE marks, Plaintiff has established its entitlement to a statutory cause
`
`of action for the opposition and cancellation.22 Double Coin Holdings Ltd. v. Tru Dev.,
`
`2019 USPQ2d 377409, at *4 (TTAB 2019) (“standing” established by testimony with
`
`
`21 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the
`Trademark Act, 15 U.S.C. §§ 1063 and 1064, under the rubric of “standing.” We now refer to this
`inquiry as “entitlement to a statutory cause of action.” Despite the change in nomenclature, our
`prior decisions and those of the U.S. Court of Appeals for the Federal Circuit interpreting
`“standing” under Sections 13 and 14 of the Trademark Act remain applicable. Chutter, Inc. v.
`Great Mgmt. Grp., 2021 USPQ2d 1001, at *10 n.39 (TTAB 2021) (citing Spanishtown Enters., Inc.
`v. Transcend Res., Inc., 2020 USPQ2d 11388, at *2 (TTAB 2020