Farmaco-Logica B.V.v.The TriZetto Group, Inc. The TriZetto Group, Inc. v. Farmaco-Logica B.V.

Trademark Trial and Appeal Board

Jul 5, 2012

No. 91184047 (T.T.A.B. Jul. 5, 2012)

GCP Mailed: July 5, 2012

Opposition No. 91184047

Farmaco-Logica B.V.

v.

The TriZetto Group, Inc.

Cancellation No. 92054337

The TriZetto Group, Inc.

v.

Farmaco-Logica B.V.

Before Bucher, Kuhlke, and Taylor,
Administrative Trademark Judges.

By the Board:
The TriZetto Group, Inc. (“TriZetto”), petitioner in
Cancellation No. 92054337 of these consolidated proceedings,
seeks to cancel the registration owned by Farmaco-Logica B.V.
(“Farmaco”), respondent in the cancellation proceeding, for
the mark PHACET for the following goods and services:
1. “central processing units and data processors for the
reproduction, storage and archiving of data in the
health care field; computers, computer peripherals,
and computer software for recording patient health
data, in the health care field,” in International
Class 9;
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91184047
Cancellation No. 92054337
2

2. “printed matter, namely, instruction manuals, training
brochures, sold as a unit with computer software, on
the use of computer software and computer devices in
the health care field,” in International Class 16; and

3. “computer programming in the health care field, and
design and development of computer systems and
software intended for use in the health care field,”
in International Class 42.1

As grounds for cancellation, TriZetto alleges that
Farmaco has abandoned all use of its PHACET mark and that
Farmaco has failed to use the PHACET mark for at least three
consecutive years since the issuance of the PHACET
registration.
These consolidated proceedings now come before the Board
for consideration of (1) the parties’ motions for summary
judgment filed in Cancellation No. 92054337 regarding
TriZetto’s solely asserted claim of abandonment and (2)
Farmaco’s motion to strike TriZetto’s reply brief in support
of its cross-motion for summary judgment. The motions are
fully briefed.
We first turn to Farmaco’s motion to strike TriZetto’s
reply brief. In support thereof, Farmaco argues that
TriZetto’s reply brief in support of its cross-motion for

1 Registration No. 3395039, issued on March 11, 2008, under
Section 66(a) of the Trademark Act.

Opposition No. 91184047
Cancellation No. 92054337
3

summary judgment exceeds the page limitations set forth in
Trademark Rule 2.127(e) and therefore should be stricken.
In response, TriZetto filed an amended reply brief which
complies with the page limitations set forth in Trademark Rule
2.127(e) and requests that the Board consider this revised
reply brief and excuse the inadvertence and mistake of counsel
involving a procedural technicality.
The Board finds that TriZetto’s originally-filed reply
brief in support of its cross-motion for summary judgment does
exceed the page limitations under Trademark Rule 2.127(e).
Accordingly, Farmaco’s motion to strike is granted and
TriZetto’s originally-filed reply brief will be given no
further consideration. Moreover, although TriZetto’s revised
reply brief is now in compliance with the page limitations
under Trademark Rule 2.127(e), the revised reply brief was
nonetheless filed after the deadline for filing a reply brief
and because the time for filing a reply brief in support of a
motion for summary judgment may not be extended, TriZetto’s
revised reply brief also will be given no consideration in our
determination herein. Trademark Rule 2.127(e) (“The timing
for filing a reply brief will not be extended.”).2

2 Even if we were to consider TriZetto’s reply brief, it would not
alter our decision herein.

Opposition No. 91184047
Cancellation No. 92054337
4

We next turn to the parties’ motions for summary judgment
on TriZetto’s only asserted claim of abandonment in
Cancellation No. 92054337.
In support of its motion for summary judgment, Farmaco
argues that TriZetto’s claim of abandonment is rebutted by
Farmaco’s excusable non-use of its PHACET mark. Specifically,
Farmaco contends that TriZetto, as the defendant in Opposition
No. 91184047 of this consolidated case, filed a counterclaim
in the opposition proceeding on July 15, 2008, seeking to
cancel the PHACET registration on the grounds of likelihood of
confusion and dilution.3 Farmaco argues that, by this
counterclaim, TriZetto challenged the validity of the PHACET
registration and, therefore, Farmaco was justified in
postponing use of the PHACET mark pending the outcome of
TriZetto’s asserted counterclaim in the opposition proceeding,
which was eventually dismissed with prejudice by the Board on
January 16, 2009. Farmaco relies on the Board’s decision in
Penthouse Int’l Ltd. v. Dyn Electronics, Inc., 196 USPQ 251,
257 (TTAB 1977), where the Board held that “nonuse of a mark

3 Farmaco, as plaintiff in the opposition proceeding, pleaded
ownership of the pending underlying application for the PHACET
mark in support of its asserted grounds for opposition which
eventually matured into a registration during the course of the
opposition proceeding. Once the PHACET registration issued,
TriZetto filed a counterclaim seeking to cancel the registration
on likelihood of confusion and dilution grounds.

Opposition No. 91184047
Cancellation No. 92054337
5

pending the outcome of litigation to determine the right to
such use or pending the outcome of a party’s protest to such
use constitutes excusable nonuse sufficient to overcome any
inference of abandonment”. In view thereof, Farmaco maintains
that the statutory presumption of abandonment is overcome by
excusable nonuse and that TriZetto cannot rely on a period of
three consecutive years of nonuse to substantiate its
abandonment claim. Therefore, Farmaco requests that the
petition to cancel be dismissed with prejudice.
In response to Farmaco’s motion for summary judgment and
in support of its cross-motion for summary judgment, TriZetto
argues that, more than three and half years after the
registration of Farmaco’s PHACET mark, Farmaco provided
responses to TriZetto’s written discovery requests wherein
Farmaco admits that the PHACET mark has never been used in the
United States. TriZetto also maintains that, in response to
its written discovery, Farmaco confirms that (1) it has not
yet deployed any marketing activities in the United States,
(2) it has not yet spent money on marketing activities in the
United States, (3) it does not own any websites on which goods
bearing the PHACET mark appear, (4) it has not yet sold goods
under the PHACET mark in the United States, (5) there are no
distributors who distribute or plan to distribute products
and/or services in associated with the PHACET mark, and (6)
Opposition No. 91184047
Cancellation No. 92054337
6

there are no parties licensed or intended to be licensed to
use Farmaco’s PHACET mark in the United States in connection
with the goods and services identified in the PHACET
registration.
Based upon these responses to discovery, TriZetto argues
that Farmaco has failed to rebut the presumption of nonuse for
three consecutive years since the registration of the PHACET
mark. TriZetto further contends that Farmaco has failed to
provide any evidence of its intent to commence use of its
PHACET mark.
With regard to Farmaco’s reliance on the Board’s decision
in Penthouse, 196 USPQ at 257, TriZetto contends that this
decision is easily distinguished from the present case.
Specifically, TriZetto argues that the Penthouse decision
requires a party to proffer evidence that substantiates a
party’s nonuse in reliance on the pending litigation and that
the existence of a challenge to a mark, by itself, does not
rebut a presumption of abandonment. Inasmuch as Farmaco has
not provided such evidence, TriZetto contends that Farmaco’s
reliance on the Penthouse decision is misplaced. In view of
the foregoing and because Farmaco has failed to rebut the
presumption of abandonment arising from more than three
consecutive years of nonuse and has failed to demonstrate any
intent to commence use of its PHACET mark in the United
Opposition No. 91184047
Cancellation No. 92054337
7

States, TriZetto maintains that it is entitled to summary
judgment on its claim of abandonment.
As evidence in support of its opposition to Farmaco’s
motion for summary judgment and cross-motion for summary
judgment, TriZetto has submitted the declaration of Brian M.
Daucher, one of the attorneys representing TriZetto, which
introduces, among other things, the following exhibits (i) a
true and correct copy of Farmaco’s registration for the PHACET
mark generated from the Trademark Electronic Search System
(“TESS”); (ii) copies of Farmaco’s responses and supplemental
responses to TriZetto’s written discovery requests, including
responses to TriZetto’s requests for admission, and (iii) a
true and correct copy of TriZetto’s pending application for
the mark FACETS also generated from TESS.
In its combined reply in support of its motion for
summary judgment and in opposition to TriZetto’s motion for
summary judgment, Farmaco maintains that its nonuse of its
PHACET mark is excusable and provides sufficient ground for
overcoming any prima facie presumption of abandonment.
Further, Farmaco argues that there is no legal basis for
TriZetto’s position that Farmaco should provide proof that it
actually relied on the pendency of TriZetto’s counterclaim in
Opposition No. 91184047 to postpone use of its PHACET mark.
Opposition No. 91184047
Cancellation No. 92054337
8

Farmaco also argues that TriZetto’s demand of proof of
Farmaco’s intent to use its PHACET mark is unfounded.
Specifically, Farmaco argues that TriZetto has failed to plead
abandonment due to a lack of intent to use the PHACET mark and
cannot now raise it as a defense against Farmaco’s motion for
summary judgment. Even had TriZetto pleaded abandonment with
no intent to resume use, such a claim fails in view of the
ample evidence demonstrating Farmaco’s intent to commence use
of its PHACET mark in U.S. commerce. In particular, Farmaco
maintains that it has already produced software manuals,
software source codes, and photographs of media on which the
software is stored which display the PHACET mark, all in
response to TriZetto’s discovery requests. Further, by way of
its reply in support of its motion for summary judgment,
Farmaco has submitted evidence demonstrating its registration
and ownership of the domain names www.phacet.com and
www.phacet.us which display Farmaco’s PHACET mark in
association with the goods and services identified in its
PHACET registration. Additionally, Farmaco contends that it
will use its PHACET mark at the Midyear Clinical Meeting of
the American Society of Health-System Pharmacists, to be held
on December 4-8, 2011, in New Orleans, Louisiana, and has
submitted documentation confirming Farmaco’s rental of
exhibition space at the convention where it plans to use its
Opposition No. 91184047
Cancellation No. 92054337
9

PHACET mark. Farmaco further maintains that even though its
activities with respect to its PHACET mark were undertaken
after the institution of the cancellation proceeding of this
consolidated case, these activities certainly preclude any
finding that Farmaco has abandoned all claims to its PHACET
mark or that Farmaco has no intent to use its mark.
Inasmuch as Farmaco has rebutted TriZetto’s claim of
abandonment due to nonuse for at least three years and because
TriZetto has failed to raise a genuine dispute of material
fact in response to Farmaco’s motion for summary judgment,
Farmaco maintains that it is entitled to judgment in its favor
and the petition to cancel should be dismissed.
As evidence in support of its combined reply in support
of its motion for summary judgment and in opposition to
TriZetto’s motion for summary judgment, Farmaco has submitted
the declaration of Paul Kuks, managing director of Farmaco,
which introduces, among other things, the following exhibits:
(i) a copy of a WHOIS search retrieved on November 18, 2011,
demonstrating Farmaco’s registration of the domain name
www.phacet.com on September 25, 2005, and showing that this
domain name continues to be owned by Farmaco at least until
September 29, 2012; (ii) a copy of a WHOIS search retrieved on
November 18, 2011, demonstrating Farmaco’s registration of the
domain name www.phacet.us on March 22, 2007, and showing that
Opposition No. 91184047
Cancellation No. 92054337
10

this domain name continues to be owned by Farmaco at least
until March 21, 2012; (iii) screen captures of Farmaco’s
www.phacet.com website displaying Farmaco’s PHACET mark used
in connection with the goods and services identified in its
PHACET registration retrieved on November 21, 2011; (iv) a
copy of Farmaco’s application to rent exhibition space in the
exhibition hall used for the Midyear Clinical Meeting of the
American Society of Health-System Pharmacists, to be held on
December 4-8, 2011, in New Orleans Louisiana; (v) a letter
from Mrs. Rasnick Tyler of the American Society of Health-
System Pharmacists dated October 5, 2011, confirming Farmaco’s
reservation of exhibition space at the Midyear Clinical
Meeting of the American Society of Health-System Pharmacists;
(vi) the first five pages of a software manual describing the
application programming interface of Farmaco’s “Phacet
Compound Server” software product which was produced to
TriZetto on July 29, 2011; and (vii) the first five pages of a
software manual describing the application programming
interface of Farmaco’s “Phacet General Functions DDL” software
product which was produced to TriZetto on July 29, 2011.
Summary judgment is only appropriate when there is no
genuine dispute as to any material fact and the moving party
is entitled to judgment as a matter of law. See Fed. R. Civ.
P. 56(a). The Board may not resolve issues of material fact;
Opposition No. 91184047
Cancellation No. 92054337
11

it may only ascertain whether a genuine dispute regarding a
material fact exists. See Lloyd’s Food Products, Inc. v.
Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir.
1993); Old Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200,
22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
When the moving party has supported its motion with
sufficient evidence which, if unopposed, indicates there is no
genuine dispute of material fact, the burden then shifts to
the non-moving party to demonstrate the existence of a genuine
dispute of material fact to be resolved at trial. Embridge,
Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1540 (TTAB
2009). All evidence must be viewed in a light favorable to
the nonmovant, and all justifiable inferences are to be drawn
in the nonmovant's favor.
Under Section 45 of the Trademark Act, a mark is deemed
to be abandoned when its use has been discontinued with intent
not to resume use. A prima facie case of abandonment may be
established by a plaintiff with proof of nonuse in the United
States for three consecutive years. See Trademark Act Section
45, 15 U.S.C. Section 1127.
The prima facie case of abandonment “eliminates the
challenger’s burden to establish the intent element of
abandonment as an initial part of [his] case” and creates a
rebuttable presumption that the defendant abandoned the mark
Opposition No. 91184047
Cancellation No. 92054337
12

without an intent to resume use. See Imperial Tobacco Ltd. v.
Phillip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1393 (Fed.
Cir. 1990). This presumption shifts the burden to the
defendant to (1) prove that he used the mark during the
statutory period or intended to resume use of the mark; or (2)
prove excusable nonuse that would negate the presumptive
intent to abandon or not resume use of the mark. See Rivard
v. Linville, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998),
aff’g, 41 USPQ2d 1731 (TTAB 1996).
Farmaco’s PHACET registration issued on March 11, 2008.
TriZetto filed its petition to cancel in Cancellation No.
92054337 of this consolidated case on August 3, 2011 and only
asserted abandonment based on three consecutive years of
nonuse. TriZetto asserted its counterclaim seeking to cancel
the PHACET registration in Opposition No. 91184047 of these
consolidated proceedings on July 15, 2008. The Board
dismissed the counterclaim with prejudice in Opposition No.
91184047 on January 16, 2009. Accordingly, the pendency of
the counterclaim lasted approximately six months.
In the interest of fairness, any nonuse of the PHACET
mark by Farmaco during the six-month pendency of TriZetto’s
counterclaim seeking to cancel the PHACET registration in
Opposition No. 91184047 should not be counted in determining
whether there has been three consecutive years of nonuse.
Opposition No. 91184047
Cancellation No. 92054337
13

That is, it may be inferred that any such nonuse of the PHACET
mark by Farmaco would be excusable in view of the pendency of
the counterclaim in Opposition No. 91884047 and Farmaco’s
resulting uncertainty as to the rights in its mark and
registration. See Penthouse Int’l Ltd. v. Dyn Electronics,
Inc., 196 USPQ 251 (TTAB 1977).
Moreover, as noted above, TriZetto argues that the
Penthouse decision does not stand for the proposition that the
existence of a challenge of mark, by itself, rebuts a
presumption of abandonment and that evidence substantiating
nonuse in reliance on the pending litigation is required. We
disagree. Although the defendant in Penthouse did proffer
some evidence to support its claim of excusable nonuse in
light of the pendency of the litigation affecting the rights
in its mark, there is nothing in the Penthouse decision which
makes it a requirement that a party proffer evidence that it
has actually relied on a pending litigation to postpone use of
its mark in order to substantiate its nonuse.
Taking into consideration the length of the period of
excusable nonuse during the pendency of TriZetto’s
counterclaim in Opposition No. 91184047, we find that there
are no genuine disputes of material fact that Farmaco has
rebutted TriZetto’s claim of abandonment based upon three
Opposition No. 91184047
Cancellation No. 92054337
14

consecutive years of nonuse since the issuance of Farmaco’s
PHACET registration.
TriZetto’s prima facie case of abandonment having been
successfully rebutted by Farmaco’s excusable nonuse, the
burden now shifts to TriZetto to demonstrate that Farmaco has
no intent to commence use of its PHACET mark.4
Based on the record, we find that TriZetto cannot do so.
In light of the evidence submitted by Farmaco in its reply in
support of its motion for summary judgment, as well as the
documentation it has already produced through discovery, we
find that there are no genuine disputes of material fact that
Farmaco has an intent to commence use of its PHACET mark.
Even if we were to assume that Farmaco’s activities with
respect to its PHACET mark undertaken after the institution of
the cancellation proceeding of this consolidated case do not
constitute technical use of the PHACET mark in commerce, these
activities certainly preclude any finding that Farmaco has
abandoned all claims to its PHACET mark or that FARMACO has no
intent to commence use of its mark in commerce.
In view thereof, Farmaco has met its burden of
demonstrating, on motion for summary judgment, that it is

4 In general, the concept of “intent to commence use” in the
context of an abandonment claim comes up in cases involving
registrations issued under Sections 44 or 66 of the Trademark
Act, as is the case here, wherein a showing of use is not
required to registration.
Opposition No. 91184047
Cancellation No. 92054337
15

entitled to judgment on TriZetto’s pleaded ground of
abandonment. Conversely, TriZetto has failed to show that
a genuine dispute of material of fact exists for trial on
its claim of abandonment or that it is entitled to judgment
on its abandonment claim as a matter of law.
Decision
Because we find, based on the record herein and
applicable law, that there are no genuine disputes of
material fact and that Farmaco has established excusable
nonuse of its PHACET mark and has demonstrated an intent to
commence use of its PHACET mark, as a matter of law,
Farmaco’s motion for summary judgment is hereby GRANTED and
TriZetto’s cross-motion for summary judgment is DENIED.
Accordingly, judgment is hereby entered against TriZetto
and the petition to cancel in Cancellation No. 92054337 is
dismissed with prejudice.
Opposition No. 91184047 will now proceed as a stand-alone
case.
Proceedings in Opposition No 91184047 are resumed.
Discovery is closed in Opposition No. 91184047. Trial dates
for Opposition No. 91184047 are reset as follows:
Testimony period for party in
position of plaintiff 8/30/2012
to close: (opening thirty days
prior thereto)
Opposition No. 91184047
Cancellation No. 92054337
16

Testimony period for party in
position of defendant 10/29/2012
to close:(opening thirty days
prior thereto)
Rebuttal testimony period to
close: 12/13/2012
(opening fifteen days prior
thereto)

In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party within thirty days
after completion of the taking of testimony. Trademark
Rule 2.l25.
Briefs shall be filed in accordance with Trademark
Rules 2.128(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.l29.
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