FirstHealth of the Carolinas, Inc. v. CareFirst of Md., Inc.

FirstHealth of the Carolinas, Inc. v. CareFirst of Md., Inc.

Opinion

 [***1920]   [*827]  LINN, Circuit Judge.

FirstHealth of the Carolinas, Inc. ("FirstHealth") appeals from a dismissal by the Trademark Trial and Appeal Board ("Board") of its counterclaim to cancel trademarks registered by CareFirst of Maryland, Inc. ("CareFirst"). CareFirst of Md., Inc. v. FirstHealth of the Carolinas, Inc., Opposition Nos. 91116355, 91124847, 2005 TTAB LEXIS 406 (T.T.A.B. Dec. 2, 2005) ("Dismissal"). Because the Board's findings are supported by substantial evidence, we affirm.

I. BACKGROUND

In 1998 and 2001, FirstHealth filed intent-to-use trademark applications -- Serial Nos. 75/455,343 and 76/222,230, respectively -- for the FIRSTCAROLINACARE mark used in conjunction with healthcare insurance claims administration and health maintenance organizations ("HMOs"). In each instance, CareFirst filed a notice of [**2]  opposition alleging a likelihood of confusion with and dilution of its registered CAREFIRST mark. The two proceedings were consolidated on March 7, 2003.

FirstHealth counterclaimed against CareFirst, seeking cancellation of the CAREFIRST trademark registrations based on abandonment due to uncontrolled licensing of the mark and failure to use the mark in connection with services other than HMO services. In accordance with 37 C.F.R. § 2.121, the parties entered into a stipulation that provided a two-month extension of FirstHealth's case-in-chief testimony period until January 31, 2004.

On February 26, 2004, FirstHealth filed a motion to reopen its testimony period for the purpose of filing notices of reliance to introduce into evidence the discovery deposition of David Wolf (and related exhibits), certain discovery responses, and certified copies of third-party registrations. FirstHealth attributed its late filing to the birth of counsel's son, the significant amount of testimony that was taken, counsel's time conflicts with unrelated matters, and a docketing error made by a new paralegal. The Board found that FirstHealth failed to demonstrate excusable neglect [**3]  and denied FirstHealth's motion to reopen the testimony period. Dismissal, 2005 TTAB LEXIS 406 at *12-13.

Noting that FirstHealth's counterclaim arguments relied principally on the Wolf deposition -- which was not of record -- the Board found that FirstHealth had failed to prove uncontrolled licensing of the mark or failure to use the mark by a preponderance of the evidence. 2005 TTAB LEXIS 406 at *29-31. Accordingly, FirstHealth's counterclaims for cancellation were dismissed. 2005 TTAB LEXIS 406 at *31.  [*828]  The Board also dismissed CareFirst's oppositions, finding that there was no likelihood of confusion with or dilution of its registered mark. 2005 TTAB LEXIS 406 at *80-81.

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