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ESTTA285580 05/22/2009

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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD 91189782 Defendant Physician's Healthcare Solutions PHYSICIAN'S HEALTHCARE SOLUTIONS 2007 YANCEYVILLE ST GREENSBORO, NC 27405-5000 UNITED STATES Answer Erik M. Pelton uspto@tm4smallbiz.com /ErikMPelton/ 05/22/2009 PRIMARY CARE ONE - Answer - FINAL.pdf ( 6 pages )(25383 bytes )

Submission Filer's Name Filer's e-mail Signature Date Attachments

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Carefirst of Maryland, Inc., d/b/a CareFirst BlueCross BlueShield Opposer, v. Physician's Healthcare Solutions, Applicant. Opposition No. 91189782

Mark: PRIMARY CARE ONE

ANSWER TO NOTICE OF OPPOSITION The following is the Answer of Applicant Physicians Healthcare Solutions ("Applicant"), owner of Federal Trademark Application Serial No. 77452208 for the mark PRIMARY CARE ONE (hereinafter "Applicants Mark"), by and through Counsel, Erik M. Pelton & Associates, PLLC, to the Notice of Opposition filed on April 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 paragraph as written, Applicant must deny. 2. Applicant is without knowledge or information sufficient to form a belief as to the

truth of allegations contained in paragraph 2 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 paragraph 3 of the Notice of Opposition, specifically whether Opposer is the current correct and proper owner of the claimed registrations, and whether each

registration is currently valid and subsisting. Since Applicant can neither admit nor deny the paragraph as written, Applicant must deny. 4. 5. 6. Denied. Denied. Denied, as Applicant is without knowledge or information sufficient to form a

belief as to Opposers 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. 8. 9. Denied. Denied. Applicant is without knowledge or information sufficient to form a belief as to the

truth of allegations contained in paragraph 9 of the Notice of Opposition. Since Applicant can neither admit nor deny the paragraph as written, Applicant must deny. 10. 11. 12. Admitted. Denied. 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. 14. 15. Denied. Denied. Denied.

FURTHERMORE, Applicant sets forth the following in support of its position:

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16. 17. 18. 19. 20. 21. 22. 23. 24. 25. services. 26.

Applicants mark is unique and distinctive. The wording in Applicants mark and Opposers mark are different. Applicants mark and Opposers mark are different in appearance. Applicants mark and Opposers mark are different in spelling. Applicants mark and Opposers mark create different commercial impressions. Opposers mark contains the word FIRST not present in Applicants mark. Applicants mark contains the word ONE not present in Opposers mark. Applicants mark contains the word PRIMARY not present in Opposers mark. Applicants application contains a disclaimer of PRIMARY CARE. PRIMARY CARE is a common phrase in relation to providing medical

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. Applicants services and Opposers services are not marketed though the same

channels of trade. 31. Applicant does not provide insurance services.

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32.

Applicants mark and Opposers mark are not likely to cause confusion, mistake

or deception to purchasers as to the source of Opposers goods or services. 33. Applicants mark and Opposers mark are not likely 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 Bar of the Commonwealth of Virginia, at the firm of: Erik M. Pelton & Associates, PLLC PO Box 100637 Arlington, Virginia 22210 TEL: (703) 525-8009 FAX: (703) 525-8089 uspto@tm4smallbiz.com 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 Board deny the Opposition and permit registration of Applicants proposed mark in Application Serial Number 77452208 in the United States Patent and Trademark Office.

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Dated this 22nd day of May, 2009.

Erik M. Pelton ERIK M. PELTON & ASSOCIATES, PLLC PO Box 100637 Arlington, Virginia 22210 TEL: (703) 525-8009 FAX: (703) 525-8089 Attorney for Applicant

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CERTIFICATE OF SERVICE I hereby certify that a true and accurate copy of ANSWER TO NOTICE OF OPPOSITION has been served on the following by delivering said copy on May 22, 2009, via First Class Mail, postage prepaid, to counsel for Opposer at the following address: Barth X. deRosa Dickinson Wright PLLC 1875 Eye Street, N.W., Suite 1200 Washington, DC 20006

By: Erik M. Pelton, Esq.

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