Talis Clinical, LLC v. Talis Biomedical Corp.

• Decision Date: 08 September 2021
• Docket Number: 91245179
• Court: Trademark Trial and Appeal Board
• Parties: Talis Clinical, LLC v. Talis Biomedical Corporation

Talis Clinical, LLC v. Talis Biomedical Corporation

No. 91245179

United States Patent and Trademark Office, Trademark Trial and Appeal Board

September 8, 2021

This Opinion is Not a Precedent of the TTAB

Brian Harrod of Moxon & Associates LLC for Talis Clinical LLC.

John Paul Oleksiuk of Cooley LLP for Talis Biomedical Corporation.

Before Wellington, Heasley and English, Administrative Trademark Judges.

OPINION

Wellington, Administrative Trademark Judge

Talis Biomedical Corporation ("Applicant") seeks registration on the Principal Register of the mark TALIS in standard characters for the following services:

Medical analysis services in the nature of analyzing clinical data for purposes of providing medical diagnostic information and for guiding patient treatment for overall population health and improved patient outcomes, in International Class 44.^[1]

Talis Clinical LLC ("Opposer") opposes registration of the applied-for mark on the ground of likelihood of confusion. Opposer alleges, inter alia, that:

"[f]or many years, and long before to the acts of Applicant alleged herein, [it] has been engaged, inter alia in creating and selling medical software and hardware for collecting, organizing, and analyzing patient data, and providing clinical guidance, monitoring and support services in the fields of selection, implementation, and operation of hardware, software systems and secure data storage and access";^[2]

through a predecessor in interest, Opposer owns rights in the TALIS mark for software and services involving the "provi[sion of] guidance that could expose opportunities to improve patient care in real-time at the point of care";^[3]

"[o]n June 19, 2013, Opposer filed an application to register the term TALIS for 'Medical software for recording, monitoring, organizing, and analyzing data obtained from medical patient monitoring equipment,' application serial no. 85964798. The application was rejected for being primarily merely a surname" and "[t]he application was dropped by Opposer due to this rejection however Opposer Talis Clinical continued and continues to use TALIS as a mark in relation to its goods and services."^[4]

"[s]ince 2012, [Opposer] has devoted substantial resources, time and effort to marketing, promoting and distributing its TALIS branded medical ^[5] and the parties' goods and services "travel in the same channels of trade and are viewed by the same customers including hospitals, clinics, and other medical professionals" and thus "are therefore substantially similar[.]"^[6]

In its answer, Applicant admits certain allegations, but otherwise denies the salient allegations of the Notice of Opposition.^[7]

The parties have briefed the opposition.

I. The Record

The record includes the pleadings and, by operation of Trademark Rule 2.122(b), Applicant's application file.

Opposer, during its main trial period, submitted the testimony declaration, with accompanying exhibits, of William Murphy, Opposer's Vice President of Regulatory and Quality.^[8] Opposer also filed a notice of reliance on the following:

• Opposer's applications Ser. Nos. 88221506 and 88655305 (for marks, respectively, TALIS and TALIS-HUB), including office actions;

• Opposer's registrations (Reg. Nos. 4912189, 4912190, 4917186, 5082780) for various non-TALIS related marks, but with specimens of use that Opposer argues show "use of the mark TALIS."^[9]

• Applicant's responses to Opposer's Interrogatories Nos. 1-3.

Applicant, during its trial period, submitted the testimony deposition transcript of William Murphy. ^[10] Applicant also filed notices of reliance on the following materials:^[11]

• TSDR electronic database printouts for the file of Opposer's abandoned application (Ser. No. 85964798);

• TSDR electronic database printouts for the file of Applicant's application (Ser. No. 87879055) for the mark TALIS for "medical diagnostic apparatus and instruments for detection, identification, and assessment of infectious diseases" in Class 10; and

• Copies of third-party registrations, with printouts from the registrants' websites, for purposes of showing weakness and that the term TALIS is "diluted due to use by third parties of similar marks on similar services."^[12]

II. Opposer's Entitlement to Statutory Cause of Action

Every plaintiff in an inter partes case must establish that it is entitled to a statutory cause of action. See Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 U.S.P.Q.2d 10837, at *3 (Fed. Cir. 2020) reh'g en banc denied, 981 F.3d 1083, 2020 U.S.P.Q.2d 11438 (Fed. Cir. 2020), petition for cert. filed (citing Lexmark Int'l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 109 U.S.P.Q.2d 2061, 2067 n.4 (2014)). An opposer may challenge the registration of another's mark when such opposition is within the zone of interests protected by the statute, 15 U.S.C. § 1063, and the opposer has a reasonable belief in damage that is proximately caused by registration of the defendant's mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 U.S.P.Q.2d 11277, at *6-7 (Fed. Cir. 2020), cert. denied, U.S. (2021).^[13]

Under the statute, "[a] claim of likelihood of confusion that 'is not wholly without merit,' including prior use of a confusingly similar mark, may be sufficient 'to establish a reasonable basis for a belief that one is damaged.'" DeVivo v. Ortiz, 2020 U.S.P.Q.2d 10153, at *2 (TTAB 2020). Opposer's Vice President, William Murphy, averred that, on the same day it filed the Notice of Opposition, Opposer filed application Ser. No. 88221506 to register the mark TALIS for "medical software for collecting, organizing, and analyzing patient data, and providing clinical guidance" in Class 9, and "monitoring and support services in the fields of selection, implementation, and operation of hardware, software systems and secure data storage and access systems, namely, collecting, organizing, and analyzing patient data, and providing clinical guidance" in Class 42.^[14] Murphy further averred that the USPTO issued a "Suspension Notice office action … citing likelihood of confusion issues … pending registration of [Applicant's applied-for mark]."^[15] A copy of the Office Action informing Opposer of a potential refusal to registration based on a likelihood of confusion with Applicant's applied-for mark is attached to the Murphy declaration.^[16]

Murphy also states that Opposer's prior application (Ser. No. 85964798, filed June 19, 2013) was abandoned after the mark was refused registration by the Office on the basis that the mark is primarily merely a surname; however, Murphy further states that Opposer "continued and continues to use TALIS as a mark in relation to its goods and services."^[17] Applicant submitted a copy of the application file for the now-abandoned application, including a copy of the Office action.^[18] Taken together, the aforementioned evidence establishes Opposer's entitlement to oppose registration of Applicant's mark. See, e.g., Empresa Cubana, 111 U.S.P.Q.2d at 1062; Tri-Star Marketing, LLC v. Nino Franco Spumanti S.R.L., 84 U.S.P.Q.2d 1912, 1914 (TTAB 2007) (plaintiff "petitioner has standing to bring the petition for cancellation based on the fact that its application to register [its mark] was refused registration by the office under Section 2(d) based on a likelihood of confusion with respondent's previously registered mark"); Weatherford/Lamb Inc. v. C&J Energy Servs. Inc., 96 U.S.P.Q.2d 1834, 1837 (TTAB 2010); Giersch v. Scripps Networks Inc., 90 U.S.P.Q.2d 1020, 1022 (TTAB 2009) (common law use sufficient to establish standing). Applicant does not contest Opposer's statutory entitlement to oppose its application.

III. Priority

To prevail under Section 2(d) of the Trademark Act, Opposer must prove that it has proprietary rights in the term it relies upon to demonstrate likelihood of confusion as to source. Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 U.S.P.Q. 40, 43 (CCPA 1981). In an opposition, a party may establish its own prior proprietary rights in a trademark through ownership of a registration, through actual use, or through use analogous to trademark use. T.A.B. Sys. v. PacTel Teletrac, 77 F.3d 1372, 37 U.S.P.Q.2d 1879 (Fed. Cir. 1996), vacating PacTel Teletrac v. TAB. Sys., 32 U.S.P.Q.2d 1668 (TTAB 1994).

Applicant, for its part, does not need to prove use in commerce but may rely on the filing date of its intent-to-use application, April 16, 2018, as the constructive use date for purposes of priority. Section 7(c) of the Act, 15 U.S.C. § 1057(c). Spirits Intl. B.V. v. S. S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 U.S.P.Q.2d 1545, 1549 (TTAB 2011); Larami Corp. v. Talk To Me Programs Inc., 36 U.S.P.Q.2d 1840, 1844 (TTAB 1995); Zirco Corp. v. American Tel. and Tel. Co., 21 U.S.P.Q.2d 1542, 1544 (TTAB 1991). In its brief, Applicant acknowledges that it "has not sold or transported goods or rendered services under the TALIS mark in the ordinary course of trade," but also argues that it "has been using the TALIS mark in a public-facing manner to associate the mark with itself and its forthcoming products for at least three years without any consumer confusion."^[19] Applicant, however, does not assert any date prior to its filing of the involved application for purposes of priority.

Thus, it is incumbent upon Opposer to establish priority before April 16, 2018, Applicant's filing and constructive use date.

A. Opposer's Evidence of Prior Use

In its trial brief, Opposer argues it has priority because "for nearly 6 years prior to [Applicant's filing date] - Opposer had continuously used its TALIS Mark[ ]."^[20] In support of its argument, Opposer relies entirely on the testimony declaration, with...