Children’s Hospital of Philadelphiav.General Hospital Corp.

Trademark Trial and Appeal Board

Mar 31, 2004

No. 91122288 (T.T.A.B. Mar. 31, 2004)

Hearing: Mailed:
November 20, 2003 March 31, 2004
Paper No. 33
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
The Children's Hospital of Philadelphia
v.
The General Hospital Corporation
_____
Opposition No. 91122288
to application Serial No. 75820871
filed on October 12, 1999
_____
John S. Child, Jr. of Dann Dorfman Herrell and Skillman, PC
for The Children's Hospital of Philadelphia.
I. Stephen Samuels and Timothy H. Hiebert of Samuels
Gauthier & Stevens LLP for The General Hospital Corporation.
______
Before Seeherman, Hohein and Walters, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
The Children's Hospital of Philadelphia has opposed the
application of The General Hospital Corporation to register
"MassGeneral Hospital for Children" and design, as shown
below, for "hospital and health care services."1 The words
"Hospital for Children" have been disclaimed.
1 Application Serial No. 75820871, filed October 12, 1999,
asserting a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91122288
2
As ground for opposition, opposer has alleged that it
is the owner of three registrations and one application
(which has since matured into a registration) for various
marks containing "tumbler figures" for medical services;
that it has used such marks prior to any date upon which
applicant can rely; and that applicant's mark so resembles
opposer's marks that, when applied to the services
identified in applicant's application, it is likely to cause
confusion or mistake or deception within the meaning of
Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d).
In its answer, applicant has denied the salient
allegations in the notice of opposition.
The opposition has been fully briefed, and both parties
were represented at an oral hearing before the Board.
The record includes the pleadings; the file of the
opposed application; and the testimony, with exhibits, of
opposer's witnesses Terese Vekteris, a marketing director of
opposer (who testified in both opposer's main testimony
Opposition No. 91122288
3
period and in its rebuttal testimony period), and Sarah J.
Fashena, a technical advisor to opposer's law firm, and of
applicant's witness, Laura M. Hynes. Opposer has submitted,
under a notice of reliance, status and title copies of its
pleaded registrations and of the registration which issued
from opposer's pleaded application; the discovery
deposition, with exhibits, of Laura M. Hynes, Director of
Marketing of Massachusetts General Hospital; and applicant's
responses to opposer's interrogatories. Opposer also relied
on applicant's responses to opposer's request for production
of documents. Normally such documents cannot be made of
record by notice of reliance, see Trademark Rule
2.120(j)(3)(ii); however, in this case applicant has treated
this submission as being of record, and therefore we will
deem the submission as being stipulated into the record.
Applicant has submitted, under notice of reliance, 92 third-
party registrations; opposer's response to applicant's
interrogatory No. 4; and status and title copies of
applicant's registrations for "MassGeneral" for hospital and
health care services and for MASSACHUSETTS GENERAL HOSPITAL
for hospital services.2
2 Applicant has also submitted with its notice of reliance
statements taken from opposer's memorandum in support of its
motion for summary judgment. Such a memorandum may not be made
of record by notice of reliance; moreover, a statement made in a
memorandum is not proof of the truth of that statement.
Accordingly, and because opposer has not treated this excerpt
from the document as being of record, we have not considered it.
Opposition No. 91122288
4
Applicant has raised a number of objections to
opposer's evidence. First, applicant objects to Exhibits 5
and 6 to the testimony deposition of Terese Vekteris, which
constitute a declaration made by Ms. Vekteris in support of
opposer's motion for summary judgment. (Exhibit 6 is simply
a copy of Exhibit 5, submitted because portions of the
Exhibit 5 declaration were cut off when the declaration was
reproduced.) A declaration made in connection with a
summary judgment motion may be made of record if the
declarant is called as a witness during the testimony
period, and identifies and authenticates the declaration.
In this case, applicant asserts that there are questions as
to Ms. Vekteris's ability to testify as to the accuracy of
the statements which she made in the declaration. These
questions go to the weight to be accorded the declaration,
but do not affect the admissibility of the document. We
also note that during Ms. Vekteris's testimony, applicant
stipulated to the accuracy of the statements made in
paragraphs 1, 2, 3, 5 and 6 of the declaration. (Vekteris
test. dep. p. 27) In addition, Ms. Vekteris testified,
during her deposition, as to the basis for the statements
made in the remaining paragraphs. As a result, even though
she did not actually compose the declaration, we find no
reason to doubt her personal knowledge or beliefs as to the
statements which were made.
Opposition No. 91122288
5
Applicant also has objected to exhibits 23-56 of Ms.
Vekteris's deposition, stating that these documents, which
constitute examples of opposer's use of its marks, were
requested in applicant's first request for production of
documents and things. Because opposer did not produce these
materials in response to the document production request,
applicant asserts that opposer may not rely on them now.
Opposer does not contend that these materials need not
have been produced. "Many of the documents identified in
Vekteris Testimonial Exhibits 34-56 appear at first blush to
be responsive to Request No. 7 in Applicant's First Request
for Production of Documents and Things, served on May 15,
2002, which called for documents relating to Opposer's use
of Opposer's marks in 1002 [sic, should be 2002]." Reply
brief, p. 19. Opposer's only response is that the documents
were produced "when they came to light only during Opposer's
Testimony Period." Id. Opposer does not explain why the
documents were not found until its testimony period.
Although opposer's attorney states that the documents were
not given him until the day of Ms. Vekteris's testimony
deposition, with the exception of one exhibit (No. 55),
there is no indication that the materials were not
previously available to the witness, and it would appear
that such materials should have been readily available to
opposer at the time the discovery requests were made. For
Opposition No. 91122288
6
example, one of the exhibits is opposer's 2001 annual stock
report. As for Exhibits 23-32, opposer states that
applicant did not object to the introduction of these until
after the completion of testimony authenticating such
exhibits, and therefore the objection is not timely. In
fact, applicant made its objection seasonably, during the
testimony deposition of Ms. Vekteris, and immediately after
opposer's attorney stated that he wanted to introduce the
exhibits (see page 59). Opposer also states that applicant
has itself introduced eight of the exhibits to which it has
objected; the record shows that such exhibits were indeed
submitted during the testimony of applicant's witness, Laura
M. Hynes. In view thereof, applicant's objections to
exhibits 34, 39, 43, 44, 45, 46 and 52 are deemed waived.
The waiver of its objections to these exhibits, however,
does not constitute a waiver of applicant's objections to
the remaining exhibits. Accordingly, applicant's objections
to Exhibits Nos. 23-33, 35-38, 40-42, 47-51 and 53-56 are
sustained. The objection to Exhibit 55, however, is
overruled; this exhibit consists of a memo from Lands End
Business Outfitters which includes attachments showing
opposer's logos which Lands End has in its files for use on
shirts and the like. Because the attachments merely show
logos which Lands End has on file, rather than use of the
Opposition No. 91122288
7
logo on goods, the memo and the attachments do not fall
within applicant's document production requests.
Finally, applicant has objected to pages 12 through 54
of Ms. Vekteris's rebuttal testimony deposition on the
ground that it is not proper rebuttal testimony. Opposer
asserts, in response, that the testimony on pages 12 through
48 was to rebut applicant's evidence regarding the lack of
strength of opposer's stick figure marks relative to its
other marks, and to the seriousness of opposer's marks, and
the testimony on pages 48-54 was to rebut applicant's
evidence as to circumstances relating to likelihood of
confusion.
The testimony of Laura Hynes at pages 113 to 129 of her
deposition, which opposer contends Ms. Vekteris's testimony
at pages 12 to 28 was to rebut, consists for the most part
of Ms. Hynes reading excerpts from Exhibit 57 of the
Vekteris testimony deposition (an article about opposer's
branding policies). She testified about whether her
experience regarding self-referrals at applicant's hospital
was similar to that reported in that exhibit regarding
opposer's experience. Ms. Hynes was also asked whether she
agreed with the article's characterization of the
connotation of the stick figures in opposer's marks. Ms.
Hynes did respond to one question that, in her opinion,
plaintiff's primary service mark was the "CH" logo, and
Opposition No. 91122288
8
there were perhaps two pages of testimony regarding the
stick figures in which she stated that the stick figures in
certain of opposer's exhibits did not appear to be an
indication of source, that they "aren't a primary identifier
of the site." p. 126.3
Opposer seeks to introduce, in rebuttal, testimony
regarding when the marks which are the subject of its
registrations were first used, the publications in which
they were used, the distribution of those publications, etc.
This testimony goes to opposer's case-in-chief, and
therefore is improper rebuttal. In fact, the testimony
which opposer claims to need to rebut, e.g., that
plaintiff's primary service mark is the "CH" logo, was
previously testified to by opposer's own witness Terese
Vekteris during opposer's opening testimony period: "We
don't consider the tumbler the primary logo for the
hospital. The 'ch' is the logo that has been used for many,
many years.... ...we use [the tumbler] as a sort of
secondary logo." p. 81.
As for the evidence purportedly designed to rebut what
opposer characterized as "circumstances relating to the
likelihood of confusion" between the design components of
3 Opposer claims that Ms. Hynes also implied that opposer's
stick figure marks are not serious trademarks, but her actual
testimony was that their connotation is whimsical and playful,
something that opposer's witness had previously also stated.
Opposition No. 91122288
9
the parties' marks, opposer claims that this testimony is to
rebut Ms. Hynes's testimony at pages 129-137. However, Ms.
Hynes's testimony at these pages discusses the fame of
applicant's hospital, the importance of the words
MASSGENERAL HOSPITAL FOR CHILDREN within its mark, how
consumers refer to applicant's mark, the connotation of the
design element in its mark, the similarities and differences
between the design elements and, at pages 136 and 137, the
witness's statements that she was unaware of any instances
of actual confusion. Ms. Vekteris's testimony regarding her
view of confusion is not proper rebuttal but, to the extent
such opinion testimony has any probative value, it should
have been submitted as part of opposer's case-in-chief. The
testimony regarding opposer's use of stick figures on lamps
and counters, or its general branding practices, is clearly
improper rebuttal.
Accordingly, the portions of Ms. Vekteris's rebuttal
testimony to which applicant has objected will not be
considered.
Opposer is the largest pediatric medical center in the
Greater Philadelphia area, and received the second highest
ranking among pediatric hospitals in "U.S. News and World
Report's" 2001 Annual Guide to America's best hospitals.
Opposer's medical facilities include a pediatric healthcare
network with approximately forty separate in-patient primary
Opposition No. 91122288
10
care, specialty care and hospital facilities located in a
tri-state region of Pennsylvania, New Jersey and Delaware.
In 1992 a decision was made to incorporate a tumbler
figure into opposer's publications for outpatient services.
Previously tumbler figures had been used in opposer's
hospital not as trademarks, but as directional signs. In
1993 the use of tumbler figures was expanded to publications
relating to clinical and inpatient services.
Opposer's various tumbler marks are reproduced at p. 13
and 14 of this opinion. The single tumbler and the four-
tumbler design marks were first used in 1992; the CHOP
CONNECTION mark and the tumbler/globe design mark were first
used in 1997. The CHOP CONNECTION mark was developed to
indicate the hospitals in the region that have a
relationship with opposer, i.e., their pediatric units are
supervised by opposer's physicians. The name CHOP
CONNECTION was chosen because the CHOP acronym was well
recognized, and the tumbler figures were used because of
their recognition as a symbol at opposer's hospital.
Opposer has promoted its tumbler design marks through
their use on brochures, which are distributed through
various outlets, including at health fairs and in press kits
and recruitment packages. They are also used on directions
sheets, on signage at the hospital facilities, on opposer's
website, on decals, on promotional items such as message
Opposition No. 91122288
11
boards and bags of popcorn, and even scattered across
exterior walls at the hospital. In many of these items, we
note that the single tumbler figure appears multiple times,
and in different positions (e.g., upside down, sideways), as
opposed to the four-figure design mark which is the subject
of Registration No. 2,254,940.
Opposer's advertising has been modest, compared to that
of other health care providers in opposer's area. Opposer
has not done any television advertising since 1987, although
at the time the CHOP CONNECTION units were introduced
opposer sponsored some PBS children's programs, in which the
tumblers appeared. Opposer has also done radio advertising
(obviously the tumbler figures would not appear in such
advertising) and some newspaper ads.
Applicant, although its legal title is General Hospital
Corporation, does business under the name Massachusetts
General Hospital. Many people shorten this name to "Mass
General Hospital" or "Mass General." The hospital has been
in existence since 1811, and is the oldest and largest
hospital in New England, and the largest and oldest Harvard
teaching hospital. It is ranked third overall by "U.S. News
and World Report." It attracts researchers and physicians
from all over the country and the world, and it has the
largest hospital-based research program in this country.
Opposition No. 91122288
12
In 1999, in order to make referring physicians and
parents more aware of its pediatric medical services,
applicant decided to develop a new name and mark. It
applied for the subject mark on October 12, 1999 as an
intent-to-use application, and in January 2000, the mark was
launched in a public campaign, which included a party to
which the press, physicians, parents, donors, and others
were invited, and a brochure, Introducing MassGeneral
Hospital for Children," that was distributed to physicians,
parents and others.
Applicant has two primary audiences for its services
and its marketing: referring physicians and parents.
Patients come as a result of three main sources: the doctors
who practice at its hospital, and whose reputation draws
patients; referrals by physicians who are not connected with
the hospital; and, in an increasing trend, patients and
their parents who self-refer, with the parents hearing about
the hospital through friends, relatives, and general
publicity. Most of the patients come from the greater
metropolitan Boston area.
Applicant has publicized its mark through brochures
directed to both physicians and to the general public; radio
(which obviously would feature only the word portion of the
mark); advertisements in such publications as the "Boston
Globe" newspaper and "Boston Magazine;" its website which is
Opposition No. 91122288
13
accessible to everyone; and conferences. Applicant holds
approximately five consumer-oriented events per year, which
draw thousands of people. Applicant's public advertising
materials, other than its website, are primarily directed to
people in eastern Massachusetts. Applicant also distributes
advertising materials to physicians throughout New England
and western New York, as well as to alumni who were trained
at its hospital.
Applicant's marketing expenditures in connection with
the applied-for mark were $300,000 in 1999; $516,2007 in
2000; $458,260 in 2001; and $542,328 in 2002.
Opposer has submitted certified status and title copies
of its pleaded registrations showing that the registrations
are subsisting and owned by opposer. These registrations
are as follows:
Mark Services
medical services, namely,
providing pediatric medical
services4
4 Registration No. 2,254,940, issued June 22, 1999.
Opposition No. 91122288
14
Medical services, namely,
providing twenty-four hour
in-patient community-based
pediatric and neonatal care
through a network of
community-based providers5
Medical services, namely,
providing pediatric medical
services6
Hospital; medical services;
health care; medical
assistance; medical
laboratory; medical research
and medical testing;
providing medical and health
information ; medical
consulting; medical clinics
and nutritional counseling7
Accordingly, priority is not in issue. King Candy Company
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). Moreover, the evidence shows that opposer
5 Registration No. 2,215,229, issued December 29, 1998.
6 Registration No. 2,310,288, issued January 25, 2000.
7 Registration No. 2,506,480, issued November 13, 2001.
Opposition No. 91122288
15
began using its marks prior to applicant's first use of its
mark.
This brings us to the issue of likelihood of confusion.
Our determination of this issue is based on an analysis of
all of the probative facts in evidence that are relevant to
the factors set forth in In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003).
As more particularly discussed below in connection with
each of the relevant duPont factors, we find that opposer
has failed to establish that applicant's use of its mark for
its identified services is likely to cause confusion with
opposer's four registered marks.
Applicant has conceded that the parties' services and
trade channels are similar. We concur. Accordingly, these
factors favor opposer.
With respect to the marks, we note that, in discussing
the duPont factor of "the variety of goods on which a mark
is used (house mark, family mark, product mark)," opposer
asserts that it has a family of stick-like human figure
design marks. Opposer never pleaded that it had a family of
marks, nor do we find that this issue was tried.8
8 In any event, opposer has not proved it has a family of marks.
Simply using a series of similar marks does not of itself
establish the existence of a family. J & J Snack Foods Corp. v.
Opposition No. 91122288
16
Accordingly, we must consider the issue of likelihood of
confusion with respect to each of the individual marks
pleaded by opposer, registrations for which it has made of
record.9
McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir.
1991).
9 We have a somewhat unusual situation here in terms of what
registrations and marks of opposer should be considered in our
analysis. Opposer pleaded ownership of four registrations (one
of which was an application at the time the opposition was
filed), submitted status and title copies of those registrations
(which are listed above), and stated, in its main brief, that the
issue to be decided in this proceeding is whether applicant's
mark should be refused registration in view of opposer's "three
preexisting registered marks or the single human figure mark
covered in Children's Hospital's pending application and
registration." Brief, p. 4. (The words "pending application and
registration" refer to the fact that the application was pending
at the time the opposition was filed, but since issued into a
registration. Opposer submitted a certified copy of both the
application and the resulting registration.) Applicant, in its
brief, referred to two additional registrations owned by opposer,
Nos. 2,288,465 and 2,487,619, which applicant had introduced as
exhibits to the rebuttal deposition of Ms. Vekteris. In its
reply brief opposer refers to its four registrations in terms of
its claim of priority, but in its discussion of the similarity of
the marks, it refers to its six registered marks, reproducing a
chart of the marks which applicant had included in its brief.
Thus, we essentially have opposer asserting likelihood of
confusion based on four registered marks, and applicant
indicating that opposer has six registered marks.
Given that the additional two registrations of opposer were
introduced by applicant in connection with the cross-examination
of opposer's rebuttal witness, we do not consider the issue of
likelihood of confusion with respect to these marks to have been
tried, such that we should deem the pleadings amended to include
such a claim. Certainly opposer did not think so, since it never
mentioned its two additional registrations in its main brief. In
any event, there are greater differences between the design marks
which are the subject of these registrations and applicant's mark
than there are between the marks which are the subject of
opposer's pleaded registrations and applicant's mark and
therefore, because we have found no likelihood of confusion vis-
à-vis the pleaded marks, we would find no likelihood of confusion
with respect to the additional marks.
Opposition No. 91122288
17
Applicant's mark, of course, contains the word element
"MassGeneral Hospital for Children." This is the dominant
part of applicant's mark, as it is the portion by which
consumers (whether physicians and medical personnel, or
patients and parents of patients) will refer to and call for
applicant's services. See In re Appetito Provisions Co., 3
USPQ2d 1553 (TTAB 1987). In this connection, the testimony
of Ms. Hynes confirms that when she has heard physicians and
parents refer to the mark, they do it by the words "Mass
General Hospital for Children." Further, because of the
renown of Mass General Hospital, consumers are even more
likely to remember this portion of the mark. Opposer has
shown two instances in which applicant uses the design
portion of its mark alone; specifically, the design appears
on a T-shirt worn by a teddy bear figure on two pages of
applicant's website. However, the entire logo also appears
on these pages. These two limited instances are not
sufficient to show that the design portion of applicant's
mark is dominant, or that the relevant class of consumers,
including physicians and parents, will pay particular note
to the design feature instead of the word portion.
Opposer would have us ignore the word portion of
applicant's mark, citing the principle that a party may not
add its house mark to another's mark and thereby avoid
confusion. Although the principle is correct, there are
Opposition No. 91122288
18
problems with applying it in this case. First, turning to
Registration No. 2,215,229 for CHOP CONNECTION and design,
it is clear that there are significant additional elements
in opposer's mark than just its figure designs, most notably
the words, such that one cannot seriously contend that
applicant has added its trade name "Mass General Hospital
for Children" to opposer's mark. For the same reasons that
MassGeneral Hospital for Children is the dominant portion of
applicant's mark, the words CHOP CONNECTION must be viewed
as the dominant part of opposer's mark, i.e., it is by this
part of the mark that people will refer to and call for
opposer's services, and the CHOP portion of the mark is an
alternate name for the well known Children's Hospital of
Philadelphia. Needless to say, applicant's mark is very
different from this mark of opposer's in appearance,
pronunciation, connotation and commercial impression.
Turning next to Registration No. 2,310,288 for the
design of figures circling a globe, again we find
significant differences between the design portion of
applicant's mark, and this mark, such that we find that
applicant has not merely added its trade name to opposer's
mark. The globe design, of course, is a prominent element
of opposer's mark, and the figures, some right-side up and
some upside down, all of which are circling the globe, give
the impression of paper doll cut-outs in a paper chain. In
Opposition No. 91122288
19
applicant's mark, on the other hand, the design is of three
separate figures of different heights, encircled by a larger
figure or object. Applicant has presented testimony that
its design is intended to connote three children of
different ages and ethnic identities, with the concept of
"approachable authority," i.e., the hospital, signified by
the larger figure. Before adopting the logo, applicant
tested it in mall intercept surveys, and therefore we can
conclude that the design does convey this connotation to
some people.
Thus, although both opposer's mark and applicant's mark
contain what might be described as stick figures, there are
significant differences in the appearance and connotations
of the designs, and additional differences in sound and
commercial impression of the marks.
The next mark we consider is that in Registration No.
2,254,940, consisting of four stick figures in different
positions, including one which is upside down, and might be
perceived to be doing a cartwheel or a handstand. This mark
perhaps best exemplifies why opposer refers to its figures
as tumblers. Again, although opposer and applicant both use
stick figures in their marks, there are such significant
differences between the designs that we find that applicant
has not merely added its trade name to applicant's mark.
Opposer's mark is of four separate figures shown in active
Opposition No. 91122288
20
positions of dance or gymnastics, while the design in
applicant's mark emphasizes a circle, with a coming together
of the three figures under the "protection" of the fourth,
larger figure which is above them. Because we find that
applicant has not merely added its trade name to opposer's
design mark, we must also give full weight to the effect of
the word portion of applicant's mark which, as we have said,
in dominant. Comparing the marks in their entireties, we
find that they are significantly different in appearance,
pronunciation (since the word portion of applicant's mark is
capable of being pronounced), connotation and commercial
impressions.
As for opposer's fourth mark, the single stick figure
of Registration No. 2,506,480, again we find significant
differences between this mark and the design portion of
applicant's mark, such that applicant's mark cannot be
viewed as merely adding applicant's trade name to opposer's
mark. A single stick figure is very different from the four
figures in applicant's mark, with the one figure encircling
the three smaller figures. Therefore, again comparing the
marks in their entireties, they differ in appearance,
pronunciation, connotation and commercial impression.
Opposer has also argued that, because its tumbler
design marks are used by hospitals with which it is
associated, but which operate under their own names, the
Opposition No. 91122288
21
presence of "MassGeneral Hospital for Children" is not a
distinguishing element in applicant's mark, but will be
regarded by consumers as merely identifying the name of one
of opposer's affiliated hospitals. If, in fact, the design
feature in applicant's mark were truly similar to opposer's
design marks, that argument might be persuasive. However,
because of the significant differences in the design
elements of the parties' marks, consumers would not assume
an affiliation or connection between them.
The factor of the similarity or dissimilarity of the
marks favors applicant.
We recognize that under actual marketing conditions,
consumers do not necessarily have the luxury of making side-
by-side comparisons between marks, and must rely upon their
imperfect recollections. Dassler KG v. Roller Derby Skate
Corporation, 206 USPQ 255 (TTAB 1980). However, this does
not mean that consumers would view all marks containing
stick figures as being the same, or that opposer is entitled
to exclusive use of stick figures in the health care field.
On the contrary, applicant has submitted substantial
evidence, in the form of 92 third-party registrations, to
show that stick figures in this field have a suggestive
meaning. Third-party registrations are not, of course,
evidence that the marks shown therein are in use or that the
public is familiar with them, but they can be used in the
Opposition No. 91122288
22
same manner as dictionary definitions, to show that a term
or, in this case, a design, has a certain significance in a
particular industry. Mead Johnson & Company v. Peter Eckes,
195 USPQ 187 (TTAB 177). In this case, the registrations
reaffirm something that is intuitively obvious: stick
figures, because they are associated with children's
drawings, have a significance in connection with children's
hospitals. Of more importance than the registrations is the
evidence of third-party use submitted by applicant.
Applicant's witness, writing from her home address,
requested informational material from a large number of
providers of healthcare services. Forty-seven of the
responses have been made of record. Although some of the
businesses/organizations appear to be more tangentially
related to the healthcare field, e.g., adoption
organizations, there are many brochures and letters from
hospitals and, in particular, children's hospitals. For
example, Loma Linda University Children's Hospital
(California) has a logo with a taller stick figure appearing
to hold the hand of a smaller stick figure (Exhibit 108);
Miami Children's Hospital has a stick figure superimposed on
a globe (Exhibit 110); Mount Clemens General Hospital
(Mississippi) has a logo with four stick figures forming a
diamond shape (Exhibit 111); North Texas Hospital for
Children uses two stick figures holding hands (Exhibit 113);
Opposition No. 91122288
23
St. Luke's Rehabilitation Institute (Washington) contains a
stick figure reaching toward the sun in its logo (Exhibit
119); and the logo of Vanderbilt Children's Hospital
(Tennessee) has two stick figures that give the appearance
of cut-out paper dolls (exhibit 123). Although we do not
have evidence of the extent of the use of such marks by the
individual institutions, the evidence which has been
submitted is sufficient to show public exposure to various
stick-figure marks in the health care field. In addition,
applicant has made of record pages from 36 websites of
institutions and organizations in the healthcare field which
also show use of stick figures in their logos. Again, not
all of these entities are hospitals or health care
providers, but a significant number are. See, for example,
exhibit 135 for The Children's Hospital (University of
Colorado), showing a single stick figure with one leg raised
in a dancing position; exhibit 136 for Children's Hospital
(Oakland), showing a "paper-cut-out chain" of five stick
figures; and exhibit 158 for Pediatric Health Care Alliance,
PA, showing three "smiling" stick figures with arms and legs
outstretched.
This evidence demonstrates that the duPont factor of
"the number and nature of similar marks in use on similar
goods" strongly favors applicant.
Opposition No. 91122288
24
With respect to the factor of the conditions under
which, and buyers to whom sales are made, there is no
dispute that the "buyers" of both parties' services are the
same. They are, for the most part, referring physicians and
parents who self-refer. However, there is a dispute about
the care taken in making the decision to obtain the parties'
services. Although both parties accept that physicians and
parents of ill children who are deciding on a place for
treatment will regard it as a serious decision and will
exercise care in making it (and in the case of referring
physicians, will be sophisticated purchasers), opposer
contends that in an emergency or urgent care situation the
"purchase" decision will be more impulsive. In particular,
opposer argues that such decisions are made based on the
location of the facility, that is, the ambulance or parent
will take a child to the closest hospital that provides such
care.
We agree that in an emergency situation it is location
that is the determinative factor in choosing a hospital.
However, for that reason, the trademark of that hospital is
irrelevant—it is not a consideration in making the
"purchasing" decision. Thus, we find that this factor
favors applicant.
The next duPont factor is the fame of the prior mark.
Applicant makes an interesting argument in this connection,
Opposition No. 91122288
25
essentially turning the analysis of this factor on its head.
Even though it is clear that applicant's mark was not used
until after opposer had made use of its marks, applicant
contends that because the words MASS GENERAL in its mark was
used much earlier, we should treat applicant's mark as the
prior mark and accord it the status of a famous mark. In
making this argument, applicant appears to ignore the fact
that it is the design portion of its mark that opposer
objects to.
Needless to say, we are not persuaded by this argument.
It is the mark for which applicant has applied that we must
consider; this mark is not the prior mark, nor do we find,
on this record, that it is famous.
As for opposer's marks, we do find that opposer has not
established that any of them are famous marks. In fact, it
is not clear that even opposer contends that they are
nationally famous, but only that they have fame in the tri-
state area from which opposer's patients primarily come.10
Although opposer's name and mark "Children's Hospital of
Philadelphia" may be considered to be famous (applicant
acknowledges that opposer is a "famous, internationally
known hospital," brief, p. 8), opposer has not shown that
10 In opposer's discussion of the lack of evidence of actual
confusion, opposer states that it uses its mark in a territory
separate and distinct from applicant's.
Opposition No. 91122288
26
any of its design marks have national, let alone
international fame.
Opposer cites Carl Karcher Enterprises Inc. v. Stars
Restaurants Corp., 35 USPQ2d 1125 (TTAB 1995), in connection
with its statement that its design marks are famous in the
Greater Philadelphia area. Presumably it is opposer's
position that it need only show fame in this geographic area
for the design marks to be considered famous. This is not
correct. In that case, the Board stated that the evidence
showed that the opposer's marks were well known in its
specific area of operation, and that it had established
local notoriety in its trading area. The Board did not find
that the opposer's marks were famous marks, nor did it
accord them the expanded scope of protection to which famous
marks are entitled.
Thus, on this basis alone, we do find that the factor
of fame does not favor opposer.
Moreover, even on a regional level, opposer has not
demonstrated the fame of any or all of its design marks.
Opposer's advertising, by the testimony of its own witness,
Terese Vekteris, has been modest compared to that of other
healthcare providers in its marketing area; opposer has not
provided any information on its advertising expenditures, or
the amount of advertising it does in terms of numbers of
Opposition No. 91122288
27
newspapers advertisement placed, printed material
distributed, etc.
Opposer asserts, in connection with its claim of fame,
information as to the number of facilities in its healthcare
network, the number of outpatient visits it receives, the
amount of its research awards and the amount of its
revenues.11 However, with the exception of the number of
facilities in its network and the number of outpatient
visits, the evidence opposer relies on as support for these
numbers is Vekteris exhibit 57. This exhibit is an article
written by a former employee of opposer, and obviously the
statements made in the article are hearsay. Although Ms.
Vekteris testified as to the accuracy of many of the
comments made in the article, she did not testify as to the
numbers set forth by opposer in its brief. In any event,
the question is not whether the mark CHILDREN'S HOSPITAL OF
PHILADELPHIA is famous, but whether any or all of the
pleaded tumbler figure marks are. Thus, opposer's receiving
research awards of $75 million in 2001 is largely irrelevant
to whether the various design marks have recognition among
the relevant consumers.
11 Opposer also discusses statements made in portions of the
rebuttal testimony of Ms. Vekteris but, as we have previously
ruled, these portions of the testimony have not been considered
because they are improper rebuttal.
Opposition No. 91122288
28
As we stated, there is testimony that opposer receives
750,000 outpatient visits a year. However, this is not
sufficient to demonstrate fame of the marks. There is no
clear evidence as to the extent of usage of the globe design
mark, such that we can conclude patients have been exposed
to the mark simply by visiting the hospital. Similarly, we
cannot ascertain the extent of usage of the four-figure
mark. The CHOP CONNECTION and design mark does not appear to
be used at opposer's own facilities, but only in connection
with the services rendered by hospitals in its network.
There is evidence that the single tumbler figure, and
multiple images of that figure, are shown throughout the
hospital facilities, including on exterior walls, signage,
lamps and the like. Although we accept that these tumbler
figures are noticeable, we cannot conclude from the mere
fact that they appear in the hospital that they have been
promoted in such a way that the single tumbler figure can be
considered a famous mark. In this connection, we note that
there is no evidence as to the number of brochures or other
printed matter bearing the tumbler mark which have been
distributed to patients within the hospital. And, as we
stated previously, there is no evidence about the numbers of
brochures or other printed matter bearing the mark which
have been distributed to potential patients and referring
physicians. Nor is there any evidence about the extent of
Opposition No. 91122288
29
any newspaper advertisements directed to potential
consumers.
There is no evidence of actual confusion. However,
because it is notoriously difficult to obtain evidence of
actual confusion, we consider this factor to favor applicant
only slightly. As for the length of time during which there
has been concurrent use without evidence of actual
confusion, applicant had used its mark for a little over
three years at the time trial ended. However, the two
hospitals are geographically separate, with opposer's
hospital network and primary customer base in the tri-state
region of southeastern Pennsylvania, southern New Jersey and
Delaware, while applicant's hospital (and affiliated
hospitals) are in Massachusetts, and its primary customer
base is Massachusetts and other parts of New England.
Although these facts indicate that there has been no real
opportunity for confusion to occur, opposer has stated in
its brief that separate hospitals in different geographic
locations can be affiliated through a network. To this
extent, even consumers in diverse geographic areas could
assume a connection between hospitals in Massachusetts and
Pennsylvania. Further, opposer's patients are not limited
to the Philadelphia region. Opposer's witness Terese
Vekteris testified that opposer receives patients from
across the nation and the world. p. 77. Thus, the fact
Opposition No. 91122288
30
that no instances of actual confusion have been reported
slightly favors applicant.
Opposer uses its various design marks as secondary
marks for its various healthcare services and, in
particular, uses its CHOP CONNECTION and design mark to
indicate separate hospitals are affiliated with it.
Although none of opposer's four marks would be considered
"product" marks, the testimony of opposer's witness Terese
Vekteris shows that the tumbler figures in general are
secondary logos. (Ms. Vekteris basically viewed the tumbler
figure, in whatever combination or state it was portrayed,
as a single logo, rather than testifying about the
individual marks.) It is clear to us that the name
CHILDREN'S HOSPITAL OF PHILADELPHIA and the "ch" logo are
opposer's house marks. Applicant uses its mark as a house
mark for its children's medical services. We consider this
factor to be neutral.
There is no market evidence as to any interface between
opposer and applicant, so this duPont factor is
inapplicable.
Applicant has the right to exclude others from use of
the MASS GENERAL portion of its mark, applicant having used
this mark for many years, and owning registrations for MASS
GENERAL and MASSACHUSETTS GENERAL HOSPITAL. However, the
design portion of applicant's mark is entitled to a limited
Opposition No. 91122288
31
scope of protection in view of the numerous third-party uses
and registrations for stick figures in the healthcare field.
Because opposer's objection is to the design portion of
applicant's mark, we find that this factor is neutral.
In terms of the extent of potential confusion, opposer
points to the numbers of patients to whom both opposer and
applicant provide services as indicating that many people
can be confused, while applicant points to the inclusion in
its mark of its separately registered and long-used house
mark to show that confusion is unlikely. Although
applicant's argument relates to some degree to the factor of
the similarity of the marks, we think it is also relevant to
this factor. Moreover, we think the factor of the care
which is exercised in deciding what hospital to use is also
relevant to the extent of potential confusion. Because of
these countervailing reasons, we find that this factor
favors neither party, or it slightly favors applicant.
With respect to the factor of "any other established
fact probative of the effect of use, applicant asserts that
it adopted its mark in good faith. Opposer, on the other
hand, contends that:
in an obvious effort to ride upon the
wave of good will generated by [opposer]
for its stick-like human figure designs
in the field of pediatric medicine,
along comes [applicant] and belatedly
adopts a confusingly similar stick-like
human figure design to help promote
[applicant] as a "hospital for
Opposition No. 91122288
32
children." Not leaving the
misappropriation of the good will of
[opposer] in the stick-like human figure
designs to chance, Applicant simply
tacks on the trade name "Mass General
Hospital for Children" to ensure that
Applicant's mark is focused and directed
to medical services for children, i.e.,
the primary focus of [opposer's]
goodwill.
Brief, p. 21 (emphasis added).
There is no evidence that applicant misappropriated or
otherwise attempted to ride on opposer's goodwill through
the adoption of its mark. On the contrary, the evidence is
clear that applicant was unaware of opposer's tumbler marks
at the time it adopted its mark. The testimony and exhibits
relating to the creation of the mark indicates that the
design was independently developed. Moreover, when
applicant's counsel conducted a trademark search, opposer's
marks were not among those that were were reported to
applicant as being similar. Thus, the factor of bad faith
adoption does not favor opposer. On the other hand, the
fact that a mark is adopted in good faith does not
necessarily mean that it is not likely to cause confusion.
This factor is therefore neutral.
After considering all of the relevant duPont factors we
find that confusion is not likely. In particular, the
differences in the marks, the plethora of third-party marks
containing stick figures, and the care that is exercised in
making a decision to obtain hospital and health care
Opposition No. 91122288
33
services outweigh the factors favoring opposer, those
factors being, in particular, the similarities in the
parties' services, channels of trade and customers.
Decision: The opposition is dismissed.