Mayo Foundation for Medical Education and Researchv.PNS & WSS, Inc.

Trademark Trial and Appeal Board

Jul 26, 2001

No. 91110756 (T.T.A.B. Jul. 26, 2001)

7/26/01
Hearing: Paper No. 24
March 7, 2001 TEH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Mayo Foundation for Medical Education and
Research substituted for Mayo Foundation1
v.
PNS & WSS, Inc.
_____

Opposition No. 110,756
to application Serial No. 75/305,028
filed on June 6, 1997
_____

J. Thomas Vitt of Dorsey & Whitney LLP for Mayo Foundation.

Albert Robin of Robin, Blecker & Daley for PNS & WSS, Inc.
______

Before Hairston, Wendel and Holtzman, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by PNS & WSS, Inc. to
register the mark CARDIOLOGY TODAY for a "medical newspaper."2

1 Opposer's consented motion (filed October 27, 2000) to substitute
Mayo Foundation for Medical Education and Research as plaintiff in
this proceeding is granted.

2 Application Serial No. 75/305,028 filed June 6, 1997, alleging a
bona fide intention to use the mark in commerce. The word CARDIOLOGY
has been disclaimed.

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 110,756
2
Registration has been opposed by Mayo Foundation. As its
ground for opposition, opposer asserts that applicant's mark
when applied to applicant's goods so resembles opposer’s
previously used mark CARDIOLOGY TODAY AND TOMORROW for
"educational services, namely, seminars in the field of
cardiology" and in connection with "audiovisual and printed
materials in the field of cardiology" as to be likely to cause
confusion under Section 2(d) of the Trademark Act. Opposer
alleges that it has used this mark in connection with the
identified goods and services since at least as early as July
of 1994, long prior to the June 6, 1997 filing date of
applicant's intent-to-use application.
Applicant, in its answer, admits that it made no use of
its mark prior to June 6, 1997, and otherwise denies the
salient allegations. Applicant affirmatively asserts that
opposer "has not acquired any trademark or service mark rights
in the unitary mark CARDIOLOGY TODAY AND TOMORROW."
The record includes the pleadings; the file of the
involved application; and opposer's notice of reliance on
certain of applicant's discovery responses (including certain
documents produced by applicant as permitted by stipulation of
the parties) and the discovery depositions (with certain
exhibits) of three of applicant's witnesses, Richard Roash
(applicant's vice president, group publisher), John C. Carter
Opposition No. 110,756
3
(publisher of applicant's journal division), and Michael W.
LoPresti (applicant's sales director, pharmaceutical group).
Opposer has submitted the testimony (with exhibits) of Arnie
Bigbee, former administrator for the Mayo School for
Continuing Medical Education, and Tamara Kary Erickson,
current administrator for the Mayo School for Continuing
Medical Education. Applicant did not take any testimony but
filed a notice of reliance on other exhibits to the deposition
of Mr. Roash, as permitted by stipulation of the parties, and
certified copies of the file contents of two registrations and
a pending application owned by opposer.
Both parties filed briefs and an oral hearing was held on
March 7, 2001.
Opposer, Mayo Foundation, sponsors educational programs
and publishes a medical journal for physicians.3 Through its
School of Continuing Education, the Mayo Foundation is
accredited to provide continuing medical educational (CME)
credits by the Accreditation Council for Continuing Medical
Education in association with the American Medical
Association. One such CME program, directed primarily to
cardiologists, is CARDIOLOGY TODAY AND TOMORROW. This is a
teleconferenced program which was first provided by opposer in
1995. The program is produced in opposer’s studios and it is
Opposition No. 110,756
4
then transmitted live, via satellite, to host sites around the
country, typically health care centers or universities.
Opposer produces seven to twelve new programs a year under
this mark and it registers from 50 to 350 host sites for each
program. However, the number of people who actually attend
the program is not tracked by opposer. In addition to these
host sites, opposer has eight contract sites which in turn
rebroadcast the program to anywhere from 200 to 1500 of their
own subscribers throughout the country. In addition, opposer
conducted at least one external webcast of its program in
1999. According to opposer’s program brochure, the
registration fee for each program offered in 1999 was $300 per
site in the United States. Individuals who request credit for
attending the program pay a $20 fee. A videotape is produced
from the live broadcast and the video, along with an
accompanying syllabus and a brochure, may be purchased from
opposer for a fee of $50. Ms. Erickson indicates that several
hundred people a year order the videotape which she believes
amounts to approximately $10,000 to $30,000 per year in sales.
Aside from its earliest marketing efforts, opposer advertises
this program by a video broadcast on subscription health care
channels located at the contract sites, through the website of
the School of CME, and, at the beginning of each year, by

3 According to Ms. Erickson, the magazine, entitled Mayo Proceedings,
Opposition No. 110,756
5
distributing to past participants as well as other interested
health care centers "thousands" of brochures (Erickson dep.
p.11) containing information on upcoming programs. The
program is also promoted at display booths located at other
cardiology programs and seminars produced by opposer.
Applicant began operations in 1923 and is, according to
the introduction on its website, a "provider of healthcare
information [and] education." Applicant publishes periodicals
and books in health fields and also sponsors CME seminars for
physicians, primarily in the field of ophthalmology.
Applicant launched its medical newspaper under the mark
CARDIOLOGY TODAY in October 1997.4 According to both Mr.
Roash and Mr. Carter, the primary purpose of the newspaper is
educational, and its major function is to provide current news
and information of particular interest to cardiologists. In
addition, the "mission statement" on the CARDIOLOGY TODAY
website provides, among other things, that "[e]ach issue will
provide timely coverage of major cardiology meetings...." The
newspaper is a monthly publication mailed free of charge to
all of the approximately 18,000 cardiologists in the United
States. An Internet version of the CARDIOLOGY TODAY

may be the third largest read medical journal among physicians.
4 Applicant's predecessor (Slack Incorporated) owned a registration
for CARDIOLOGY TODAY for "medical magazines." The registration was
cancelled under Section 8 on September 10, 1991. Applicant is not
claiming any rights in the mark based on its predecessor’s use.
Opposition No. 110,756
6
publication has been available since at least as early as
1998. The website for CARDIOLOGY TODAY also features "online
seminars," although Mr. Roash states that that this service is
still under development. Applicant promotes its newspaper by
distributing free copies of the newspapers to cardiologists at
meetings and conferences such as the annual meetings of the
American College of Cardiology and the American Heart
Association. Applicant's advertising is directed to
pharmaceutical companies and their advertising agencies that
place advertisements in, and pay for applicant's newspaper.
According to Mr. LoPresti, the CARDIOLOGY TODAY newspaper
ranks sixth in readership out of eighteen other publications
in the cardiology field.
Applicant, in its brief, has not disputed opposer's
priority. In any event, opposer has clearly established use
of the designation CARDIOLOGY TODAY AND TOMORROW in connection
with its seminars and the associated printed materials which
predates applicant's constructive date of first use.
We turn then to a consideration of likelihood of
confusion. Our determination under Section 2(d) is based on
an analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of confusion
issue, including the similarity of the marks and the
similarity of the goods. In re E.I. du Pont de Nemours & Co.,
Opposition No. 110,756
7
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The factors deemed
pertinent in this proceeding are discussed below.
We turn first to the parties' respective goods and
services. Applicant contends in this regard that its medical
newspaper is "dissimilar" (applicant’s brief, p. 14) to
opposer's CME seminars, that applicant's medical newspaper
does not compete with CME seminars, and that the newspaper
cannot be substituted for these seminars. It is clear that
there are specific differences in the respective products and
services. However, the question is not whether purchasers can
differentiate the goods and services themselves but rather
whether purchasers are likely to confuse the source of the
goods and services. See, e.g., Helene Curtis Industries Inc.
v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989). Thus, it is
not necessary that the goods and services of the parties be
similar or even competitive to support a finding of likelihood
of confusion. It is sufficient if the respective goods and
services are related in some manner and/or that the conditions
surrounding their marketing are such that they would be
encountered by the same persons under circumstances that
could, because of the similarity of the marks used thereon,
give rise to the mistaken belief that they emanate from or are
associated with, the same source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Opposition No. 110,756
8
We find that medical newspapers and medical seminars are
closely related media for disseminating information.
Moreover, applicant's newspapers and opposer's seminars
concern the same subject matter and serve the same general
purpose, that is, to inform and educate cardiologists about
various issues including current news and the latest
developments relating to their field. As Ms. Erickson points
out, in addition to seminars, cardiologists stay abreast of
current developments in their field through journals and other
medical periodicals. In fact, opposer and applicant are
engaged in both activities, that is, both organizations
publish medical periodicals and they both conduct medical
seminars and conferences. There is also evidence that
applicant intends to expand its operations into "online"
seminars under the CARDIOLOGY TODAY mark in the near future.
Thus, it would be reasonable for purchasers to expect medical
seminars and medical publications such as applicant’s
newspaper to emanate from, or to be sponsored by the same
organization.
Moreover, contrary to applicant’s claim, there is some
overlap in the marketing of these medical seminars and medical
newspapers as well as the channels of trade in which they are
provided. Both goods and services are promoted over the
Internet and, as of late, are also provided over the Internet.
Opposition No. 110,756
9
In addition, they are both promoted at professional meetings
and conferences, and cardiologists may even expect to see
opposer’s CME seminars to be advertised in at least the online
version of applicant’s newspaper. In any event, any asserted
differences in trade and marketing channels for these goods
and services becomes less significant when we consider that
both applicant's newspapers and opposer's seminars are
intended to reach precisely the same individuals, every
cardiologist located in the United States.
Thus, the question is whether the marks used in connection
with the respective goods and services is likely to cause
confusion. As a preliminary matter, there seems to be some
dispute as to what opposer's mark is. Opposer has asserted
rights based on use of the word mark CARDIOLOGY TODAY AND

TOMORROW as a single typed phrase.5 Applicant contends that
opposer's common law rights in the mark reside in the

5 As noted earlier, applicant submitted certified copies of the file
contents for two registrations owned by opposer. These
registrations, which issued after the opposition was filed, cover the
marks CARDIOLOGY TODAY AND TOMORROW in typed form. One registration
is for cardiology seminars and the other is for printed instructional
materials in the field of cardiology. Applicant is relying on this
evidence to show that the Examining Attorney did not cite applicant’s
involved application against opposer’s later-filed applications.
Opposer, contrary to its apparent belief, is not entitled to rely on
Opposition No. 110,756
10
designation as two separate terms, CARDIOLOGY and TODAY AND
TOMORROW, rather than as a unitary phrase. Applicant
maintains that CARDIOLOGY is "separated from TODAY AND
TOMORROW by type style and/or a colon and/or a line" and that
such separations are "significant." (Applicant's brief, p.2,
fn 1). Opposer’s mark is used in a variety of formats, often
within the same publication. For example, on the cover of
opposer's 1995 program brochure, the word CARDIOLOGY is
positioned above TODAY AND TOMORROW and a line is drawn
between the two terms. At another point in the brochure, the
word CARDIOLOGY is displayed in upper case block letters
followed on the same line by a colon and the words TODAY AND
TOMORROW in lower case letters with capital T's. On a
different page, TODAY AND TOMORROW is displayed on the same
line and in the same style of lettering as CARDIOLOGY but in
smaller versions of those letters. In yet another format, the
entire
phrase appears on the same line in the same type size and
style. The colon is there, but it is barely visible and the
italic lettering seems to be used only to set the mark off

these registrations to support its claimed rights in the typed
version of the mark or any rights in the mark based on these
registrations for that matter since opposer has neither submitted
status and title copies of these registrations (the certified copies
of record do not indicate status and title) nor introduced such
registrations by way of testimony made by a witness having knowledge
Opposition No. 110,756
11
from the text. We find that this latter use of CARDIOLOGY
TODAY AND TOMORROW is essentially the equivalent, in its
commercial impression, of a typed version of the mark.
Even where the terms CARDIOLOGY and TODAY AND TOMORROW
appear on separate lines, or in uses where the colon is more
noticeable, the mark as a whole, still conveys a single,
unitary impression.6 For example, since a colon is used to
direct attention to what follows it, the colon in this mark
serves to join the terms CARDIOLOGY and TODAY AND TOMORROW
rather than to separate them. The point is that in each
format, the visual and connotative impression of the words is
that of a composite phrase, and not just the individual terms
TODAY AND TOMORROW and CARDIOLOGY.
Turning to a comparison of the respective marks, we find
that, considered in their entireties, CARDIOLOGY TODAY is
substantially similar to CARDIOLOGY TODAY AND TOMORROW.
Applicant's mark incorporates a very significant portion of
opposer's mark. The word CARDIOLOGY may be generic and is in
fact disclaimed in applicant's mark. However, it is well
settled that the disclaimed material still forms a part of the
mark and cannot be ignored in comparing the marks as a whole.

of the current status and title of the registrations. See Trademark
Rule 2.122(d)(1) and (2).
6 However, there is no evidence that consumers would abbreviate
opposer's mark to "CARDIOLOGY TODAY."
Opposition No. 110,756
12
Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565,
218 USPQ 390 (Fed. Cir. 1983).
The marks are visually similar even considering that the
words "AND TOMORROW" do not appear in applicant’s mark.
Relying on Pfizer Inc. v. Cody John Cosmetics, Inc., 211 USPQ
64 (TTAB 1981), applicant contends that we should consider the
"realities of the marketplace" and "consider the manner in
which the marks appear to the public." (Applicant's brief,
p.13). Applicant concludes that the exhibits showing the
manner in which the parties actually display their marks
demonstrates that confusion is not likely to occur. We
disagree with these contentions. Applicant seeks to register
its mark in typed form. This means that applicant is free to
present its mark in a variety of forms and styles, including
stylization similar to that used by opposer. Phillips
Petroleum v. C.J. Webb, 442 F.2d 1376, 170 USPQ 35 (CCPA
1971); and INB National Bank v. Metrohost, 22 USPQ2d 1585
(TTAB 1992). For example, if applicant were to emphasize
CARDIOLOGY by depicting it in large, capital letters and to
show TODAY in a smaller, lower case lettering, the two marks
would appear even more similar. In fact, even when we
consider the manner of actual use, we find that applicant's
mark in at least one display, appears in a similar format to
one of opposer's presentations of its mark. For example, on
Opposition No. 110,756
13
applicant's web page, the word CARDIOLOGY appears in large
block style letters and TODAY is depicted in smaller and more
stylized lettering.
The two marks, when considered as a whole, also have
similar connotations. Both marks suggest that the parties are
providing news and information in the cardiology field. The
wording AND TOMORROW suggests a slightly broader scope of
information but it does not change the overall meaning the two
marks convey. Keeping in mind that the comparison of marks
is not made on a side-by-side basis and that recall of
purchasers is often hazy and imperfect, the difference in
these marks is not so significant as to eliminate the
likelihood of confusion. See, e.g., HRL Associates Inc. v.
Weiss Associates Inc., 12 USPQ2d 1819 (TTAB 1989). The
customers for these goods and services are busy physicians who
are inundated with resource materials. Upon encountering
applicant’s CARDIOLOGY TODAY mark for newspapers, they may not
remember that the wording AND TOMORROW is part of opposer's
mark or if they do recall the term, they may assume, in view
of the similar meanings of the marks and the fact that they
are used on closely related goods and services, that the
CARDIOLOGY TODAY medical newspaper is simply an extension of,
or somehow associated with or sponsored by the CARDIOLOGY
TODAY AND TOMORROW medical seminar.
Opposition No. 110,756
14
Applicant argues that opposer's mark, containing the
generic term CARDIOLOGY combined with "highly suggestive
words" (brief p.11), is entitled only to a narrow scope of
protection. First, contrary to applicant's apparent
contention, any alleged third-party uses of the generic word
"cardiology" in otherwise dissimilar marks is irrelevant.
Moreover, while the word CARDIOLOGY alone may be generic, the
phrase as a whole is only suggestive of opposer's services.
Applicant has introduced no evidence of third-party
registrations or uses of similar marks in the relevant market
or any other evidence to support its claim that registrant's
mark is highly suggestive of the services or that it is
entitled to only a narrow scope of protection. Further,
opposer's evidence tends to show that the CARDIOLOGY TODAY AND
TOMORROW program has achieved at least a moderate degree of
recognition in the cardiology field and that the mark is in
fact entitled to more than a narrow scope of protection.7
We also note that while the purchasers of these goods and
services may be informed and sophisticated individuals, they
are not necessarily knowledgeable about trademarks or
sophisticated in distinguishing one trademark from another

7 Applicant argues that opposer has not established the “fame” of its
mark, but opposer has made no such assertion. We note however, that
as applicant points out, the renown of Mayo Foundation itself has not
been established on this record, nor has opposer identified or
Opposition No. 110,756
15
when the marks are as similar as those herein and cover
closely related goods and services. See, e.g., Hilson
Research Inc. v. Society for Human Resource Management, 27
USPQ2d 1423 (TTAB 1993). Furthermore, there is no evidence
that these individuals are likely to exercise great care in
purchasing these particular goods and
services. Opposer’s seminars are taken by cardiologists for
required credit and they are relatively inexpensive, costing
just $20 for those individuals who request credit for the
program and $50 for those who wish to purchase a videotape of
the program.
Applicant’s newspaper is free and therefore no purchasing
decision is being made.
Finally, we do not view the absence of actual confusion as
significant in view of all the evidence indicating that
confusion is likely. See, e.g., On-Line Careline, Inc. v.
America Online, Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir.
2000). In addition, evidence of actual confusion is difficult
to come by, and considering that the parties’ seminars and
newspapers are either free or relatively inexpensive, if
purchasers are generally satisfied with the quality of these
products and services, they may not be likely to take time out
from their busy medical practices to report any such

established the relationship, if any, between opposer and Mayo
Opposition No. 110,756
16
confusion, or they may just incorrectly assume that the
products and services emanate from the same source.8
In view of the foregoing, we conclude that purchasers
familiar with opposer’s medical seminars offered under the
mark CARDIOLOGY TODAY AND TOMORROW would mistakenly believe
that applicant's medical newspaper issued under the mark
CARDIOLOGY TODAY was a product emanating from opposer or that
the products and services were somehow associated with the
same source.
DECISION: The opposition is sustained.

Clinic.
8 Applicant also believes that the Board should give "considerable
weight" (applicant’s brief, p.10) to the fact that the Examining
Attorney did not cite applicant's CARDIOLOGY TODAY applications
against opposer's later-filed applications. The Board, of course, is
not bound by an Examining Attorney's prior determination as to
registrability. See McDonald's Corp. v. McClain, 37 USPQ2d 1274
(TTAB 1995).