No. 85567720 (T.T.A.B. Sep. 19, 2014)

St. Luke's Episcopal-Presbyterian Hospitals

Trademark Trial and Appeal BoardSep 19, 2014

No. 85567720 (T.T.A.B. Sep. 19, 2014)

This Opinion is not a Precedent of the TTAB Mailed: September 19, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re St. Luke’s Episcopal-Presbyterian Hospitals _____ Serial No. 85567720 _____ David B. Jennings of Armstrong Teasdale LLP, for St. Luke’s Episcopal-Presbyterian Hospitals. Colleen Kearney, Trademark Examining Attorney, Law Office 113, Odette Bonnet, Managing Attorney. _____ Before Bucher, Kuhlke and Shaw, Administrative Trademark Judges. Opinion by Bucher, Administrative Trademark Judge: St. Luke’s Episcopal-Presbyterian Hospitals (“Applicant”), of Chesterfield, MO, seeks registration on the Principal Register of the following mark: for “walk-in medical clinic offering episodic care of minor illnesses; walk-in medical clinic offering assessment and treatment of minor illnesses provided by a nurse Serial No. 85567720 - 2 - practitioner working under the supervision of a medical doctor” in International Class 44.1 The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), having determined that Applicant’s mark so resembles the following previously registered marks owned by two different parties: St. Luke’s Episcopal Hospital / St. Luke’s Health System, Houston, TX2 for “providing health care services, namely hospitalization and related medical care” in International Class 42;3 for “providing health care services, namely hospitalization and related medical care” in International Class 42;4 ST LUKE’S CENTER FOR LIVER DISEASE for, inter alia, “medical services” in International Class 44;5 for “maintaining electronic patient medical records and files” in International Class 44;6 1 Application Serial No. 85567720 was filed on March 13, 2012, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act. The mark consists of a stylized Greek cross with the words “St. Luke’s” and “Convenient Care” alongside to the right of the cross. Color is not claimed as a feature of the mark. No claim is made to the exclusive right to use the words “Convenient Care” apart from the mark as shown. 2 Each of the four cited registrations owned by St. Luke’s Episcopal Hospital / St. Luke’s Health System of Houston, TX, contain a statement that these registrations are limited to the area comprising the United States except for the states of Idaho, Washington, Oregon, Nevada, Utah, Montana and Wyoming, pursuant to Concurrent Use Proceeding No. 94002427. The properties involved in this concurrent use agreement are explicitly identified. 3 Registration No. 1949835 issued on January 23, 1996; renewed. 4 Registration No. 1979082 issued on June 11, 1996; renewed. 5 Registration No. 3717691 issued on December 1, 2009. No claim is made to the exclusive right to use the phrase “Center for Liver Disease” apart from the mark as shown. Serial No. 85567720 - 3 - St. Luke’s Regional Medical Center, Boise, ID7 for “healthcare; hospitals; medical clinics; medical information; medical services” in International Class 44;8 ST. LUKE’S for “hospitals, health care clinics and health care services for treatment of patients” in International Class 44;9 ST. LUKE’S HEALTH SYSTEM for “hospitals, health care clinics and health care services for treatment of patients” in International Class 44;10 ST. LUKE’S WOOD RIVER MEDICAL CENTER for “hospitals, health care clinics, and health care services for treatment of patients” in International Class 44;11 and ST. LUKE’S MAGIC VALLEY REGIONAL MEDICAL CENTER for “hospitals, health care clinics, and health care services for treatment of patients” in International Class 44.12 6 Registration No. 4163126 issued on June 26, 2012. The mark consists of the stylized wording “ST. LUKE’S E CARE CONNECTION” appearing to the right of a depiction of a Greek cross with a blank circle in the middle and hashed lines in the vertical and horizontal ends of the cross. The wording “ST. LUKE’S” appears in all capital letters, followed by a lower case letter “e” which is surrounded by a circle and is located offset on the right side of the circle. The circle containing the letter “e” is followed by the word “Care” appearing in capital and lowercase letters which is followed by the term “Connection” also appearing in capital and lowercase letters. 7 Each of the five cited registrations owned by St. Luke’s Regional Medical Center of Boise, ID, contain a statement that these registrations are limited to the states of Idaho, Washington, Oregon, Nevada, Utah, Montana, and Wyoming, pursuant to Concurrent Use Proceeding No. 94002427. The properties involved in this concurrent use agreement are explicitly identified. 8 Registration No. 4047330 issued on November 1, 2011. The mark consists of a stylized cross design with the words “St Luke’s.” 9 Registration No. 4047459 issued on November 1, 2011. 10 Registration No. 4047460 issued on November 1, 2011. No claim is made to the exclusive right to use the term “Health System” apart from the mark as shown. 11 Registration No. 4047461 issued on November 1, 2011. No claim is made to the exclusive right to use the terms “Medical Center” or “Wood River” apart from the mark as shown. 12 Registration No. 4047462 issued on November 1, 2011. No claim is made to the exclusive right to use the phrase “Magic Valley Regional Medical Center” apart from the mark as shown. Serial No. 85567720 - 4 - that use of Applicant’s mark in connection with Applicant’s services is likely to cause confusion, to cause mistake, or to deceive. After the Trademark Examining Attorney made the refusal final, Applicant appealed to this Board. Applicant and the Trademark Examining Attorney have fully briefed the issues. We affirm the refusal to register. Likelihood of Confusion Analysis Our determination under Section 2(d) is based upon an analysis of all probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the relationship between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). We discuss each of the du Pont factors concerning which Applicant or the Trademark Examining Attorney submitted argument or evidence. Applicant argues that there is no chance for consumer confusion as to the source of the services, because its services (e.g., walk-in treatment for minor illnesses) are different from those of the cited registrations; the marks are profoundly different; these respective marks have long coexisted without any confusion; and “St. Luke’s” Serial No. 85567720 - 5 - is a relatively weak source-indicator given the number and nature of similar marks around the country used in connection with faith-based medical services. A. Relationship of the respective services We turn our attention to the relationship of the services as recited in the involved application and the cited registrations. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). It is settled that it is not necessary that the respective services be identical or even competitive in order to find that they are related for purposes of our likelihood of confusion analysis. That is, the issue is not whether consumers would confuse the services themselves, but rather whether they would be confused as to the point of origin of the services. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The services need only be sufficiently related that consumers would be likely to assume, upon encountering the services under similar marks, that the services originate from, are sponsored or authorized by, or are otherwise connected to the same source. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); and In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991). The services recited in the application are “walk-in medical clinic offering episodic care of minor illnesses; walk-in medical clinic offering assessment and treatment of minor illnesses provided by a nurse practitioner working under the supervision of a medical doctor.” The services recited in the cited registrations Serial No. 85567720 - 6 - include variations on broad categories such as health care services, hospitalization, medical care, medical and health care clinics, and maintaining electronic medical records. To the extent that registrants’ health care services, medical care, and offering services through medical and health care clinics would seem to encompass the services offered in the prototypical “walk-in medical clinic,” we find the services have some direct overlap, and hence presumably would also be provided to the same classes of ordinary consumers through exactly the same channels of trade. Nonetheless, the Trademark Examining Attorney has also demonstrated with a series of screen-prints from Internet websites the relationship of Applicant’s “walk- in medical clinic” services to a variety of other healthcare services listed in the cited registrations, including general medical care, hospitalization, the maintenance of electronic medical records, etc.: In fact, the Trademark Examining Attorney shows from Applicant’s own “Urgent Care” webpage that “St. Luke’s Urgent Care Centers” are “Hospital-owned.”13 Cleveland Clinic provides extended hours for walk-in medical care and maintains and provides access to patients’ medical records.14 Everett Clinic provides walk-in clinic care, primary care and maintains electronic patient medical records.15 13 Office action of June 23, 2012, at 32 of 33. 14 http://my.clevelandclinic.org/florida/patients/doctor_visit.aspx, and http://my.clevelandclinic.org/patients-visitors/medical-records/default.aspx, as affixed to Office action of January 8, 2013. 15 http://www.everettclinic.com/PatientResourceCenter/Health_Record_info.ashx?p=1726 and http://www.everettclinic.com/Walk_In_Clinic.ashx?p=920. Serial No. 85567720 - 7 - Murfreesboro Medical Clinic & Surgicenter provides walk-in clinics, maintenance of electronic medical records, and general healthcare including surgical care.16 Riverside Medical Clinic maintains electronic medical records as well as providing general medical care including surgical centers for out-patient procedures.17 Howard University provides walk-in urgent care services, primary care services and hospitalization.18 INOVA provides emergency and urgent care walk-in services, hospital services and general medical care services.19 She also provided for the record a variety of third-party registrations demonstrating these same relationships. The involved marks are shown below: 20 21 22 MONTEFIORE HEALTH SYSTEM23 BOYS TOWN SAME DAY PEDIATRICS24 25 OASIS OF HOPE26 California Health & Longevity Institute27 16 http://www.mmclinic.com/www/docs/32/urgent-care-murfreesboro-nashville-tennessee 17 http://www.riversidemedicalclinic.com/ 18 http://huhealthcare.com/healthcare/hospital/about-huh 19 http://www.inova.org/ 20 Registration No. 3717479 issued on December 1, 2009. 21 Registration No. 4137558 issued on May 8, 2012. 22 Registration No. 3720762 issued on December 8, 2009. 23 Registration No. 3255293 issued on June 26, 2007; Section 8 affidavit (six-year) accepted and Section 15 affidavit acknowledged. 24 Registration No. 4136296 issued on May 1, 2012. 25 Registration No. 3988598 issued on July 5, 2011. Serial No. 85567720 - 8 - 28 VIRGINIA TECH CARILION SCHOOL OF MEDICINE AND RESEARCH INSTITUTE29 ASCENT30 DOX4ALL31 ANN & ROBERT H. LURIE CHILDREN’S HOSPITAL OF CHICAGO32 REMOTE MEDICAL INTERNATIONAL33 your doctors 4 life34 ARIZONA NATURAL MEDICINE35 MAYO CLINIC HEALTH SYSTEM36 OPUS 2237 38 RIDGEVIEW CLINICS39 Center for Interventional Medicine40 26 Registration No. 3393233 issued on March 4, 2008. 27 Registration No. 3266693 issued on July 17, 2007; Section 8 affidavit (six-year) accepted. 28 Registration No. 4065554 issued on December 6, 2011. 29 Registration No. 4289420 issued on February 12, 2013. 30 Registration No. 3231173 issued on April 17, 2007; Section 8 affidavit (six-year) accepted and Section 15 affidavit acknowledged. 31 Registration No. 4059704 issued on November 22, 2011. 32 Registration No. 4350572 issued on June 11, 2013. 33 Registration No. 4098372 issued on February 14, 2012. 34 Registration No. 4120855 issued on April 3, 2012. 35 Registration No. 4104750 issued on February 28, 2012. 36 Registration No. 4189092 issued on August 14, 2012. 37 Registration No. 4369805 issued on July 16, 2013. 38 Registration No. 4141918 issued on May 15, 2012. 39 Registration No. 4303960 issued on March 19, 2013. 40 Registration No. 4211831 issued on the Supplemental Register on September 18, 2012. Serial No. 85567720 - 9 - 41 Accordingly, in light of this accumulated evidence, we find that this critical du Pont factor favors a finding of a likelihood of confusion herein. B. Strength of the cited marks Applicant points out that the fact that the cited St. Luke’s registrations are owned by two separate parties demonstrates that the United States Patent and Trademark Office has already taken the position that confusion between similar marks is not likely due to any minor differences in the marks and/or dissimilarities in the respective services. However, the registrations owned by St. Luke’s Health System of Houston, TX, and by St. Luke’s Regional Medical Center of Boise, ID, are all geographically limited pursuant to a concurrent use agreement made an integral part of these registrations through Concurrent Use Proceeding No. 94002427.42 This geographical division of the country grows out of a statutory proviso made part of 41 Registration No. 4304610 issued on March 19, 2013. 42 As noted above, U.S. Registration Nos. 1949835, 1979082, 3717691 and 4163126 are owned by St. Luke’s Episcopal Hospital/ St. Luke’s Health System of Houston, TX. These registrations are restricted to all the U.S. except the states of Idaho, Washington, Oregon, Nevada, Utah, Montana, and Wyoming. Similarly, U.S. Registration Nos. 4047330, 4047330, 4047461, 4047462 and 4047459 are owned by St. Luke’s Regional Medical Center of Boise, ID. These registrations are limited to the area comprising of the states of Idaho, Washington, Oregon, Nevada, Utah, Montana and Wyoming. Serial No. 85567720 - 10 - Section 2(d) of the Trademark Act. Contrary to Applicant’s contention, this arrangement supports a conclusion that the “St. Luke’s” marks of these named parties are indeed strong enough to require this exceptional adjudication process. By contrast, should Applicant herein be issued a registration without any limitations, it would then enjoy a presumption of the exclusive right to use its mark nationwide under Trademark Act Section 7(b), 15 U.S.C. § 1057(b), to the detriment of the geographically-limited registrations of both owners of the existing concurrent registrations. Section 2(d) of the Trademark Act is intended to protect the registrant(s) from the adverse commercial impact due to the issuance of a registration of a similar mark to a new applicant. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Should a weighing of all the relevant du Pont factors support a finding of a likelihood of confusion, registration to Applicant herein must be refused in the interest of the existing cited registrants as well as to prevent likely buyer confusion as to the source of the medical services at issue. More generally, Applicant argues that whenever consumers are confronted with commonly-used terms like “St. Luke’s” in the healthcare marketplace, they have been conditioned to expect different sources based on minor differences among the marks or distinctions in the specific type of arguably related services. Applicant argues that “[c]onsumers of health services, particularly faith-based health systems, hospitals, or care facilities, have come to expect that different sources of such services may use the phrase ST. LUKE’S.” In doing a quick online search of the Serial No. 85567720 - 11 - American Hospital Directory, Applicant allegedly identified around fifty separate hospitals that use the term “St. Luke’s.”43 However, upon closer inspection, we note that this listing does not represent fifty separate entities. In fact, at least six separate hospitals or medical centers on this list are components of the first-named registrant cited above, St. Luke’s Health System of Houston, TX: Hospital Name Beds City State CHI Saint Luke's Health-Baylor Saint Luke’s Medical Center 679 Houston TX CHI Saint Luke’s Hospital at the Vintage 78 Houston TX CHI Saint Luke’s Community Medical Center – The Woodlands 184 The Woodlands TX CHI Saint Luke’s Health Lakeside Hospital 30 The Woodlands TX CHI St. Luke’s Patients Medical Center 61 South Pasadena TX CHI St. Luke’s Sugar Land Hospital 78 Sugar Land TX Similarly, at least five separate hospitals or medical centers on this list are components of the second-named registrant cited above, St. Luke’s Regional Medical Center of Boise, ID: Hospital Name Beds City State Saint Luke’s Boise 567 Boise ID Saint Luke’s Meridian 0 Meridian ID Saint Luke’s Jerome 25 Jerome ID Saint Luke’s Magic Valley Medical Center 194 Twin Falls ID Saint Luke’s Wood River Medical Center 25 Ketchum ID 43 Exhibit I, Applicant's Response to Office Action filed December 26, 2012. Serial No. 85567720 - 12 - Among other multiple entries, fifteen separate hospitals or medical centers on this list are affiliated with Applicant, with Saint Luke’s Hospital of Kansas City, MO or with St. Luke’s University system in the suburbs of Philadelphia: Hospital Name Beds 1.4 State Saint Luke’s Hospital 463 Chesterfield MO Saint Luke’s Rehab Hosp. 35 Chesterfield MO Saint Luke’s Hospital 413 Kansas City MO Saint Luke’s South 102 Overland Park KS Saint Luke’s Cancer Institute 6 Kansas City MO Saint Luke’s East - Lee's Summit 125 Lee's Summit MO Saint Luke’s Cushing Memorial Hospital 51 Leavenworth KS Saint Luke’s Northland Hospital - Smithville Campus 136 Smithville MO Saint Luke’s North Hospital - Barry Road Campus 0 Kansas City MO Saint Luke’s Hospital - Allentown 0 Allentown PA Saint Luke’s Hospital - Anderson 72 Easton PA Saint Luke’s Hospital - Bethlehem Campus 584 Bethlehem PA Saint Luke’s Hospital - Miners Campus 92 Coaldale PA Saint Luke’s Hospital - Quakertown Campus 62 Quakertown PA Saint Luke’s - Warren Campus 140 Phillipsburg NJ Moreover, among the dozen or so other medical centers on this list, while they each do contain the term “St. Luke’s,” many apparently highlight other distinctive indicia within their composite marks (i.e., distinctive matter not present in the cited registrants’ marks or that of Applicant), such as the Spanish-language equivalent, “San Lucas,” or designations such as “Rehabilitation Institute,” “UnityPoint Health,” “Behavioral Health Center,” Health ONE Presbyterian,” “Mount Sinai,” “Faxton,” etc. Serial No. 85567720 - 13 - Accordingly, on this record, we do not find evidence of widespread or unrestrained use by third parties of “St. Luke’s” marks in connection with health care services. Finally, Applicant argues that based upon the record offered by the Office, the registration of just one more weak “St. Luke’s” mark is appropriate. However, even if we should conclude that St. Luke’s has been adopted by a number of different faith-based entities around the country, the predecessor to our primary reviewing Court and this Board have recognized that marks deemed somewhat weak are still entitled to protection against the registration by a subsequent user of a similar mark for closely-related services. In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982); see also King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974). Therefore, this du Pont factor, at best for Applicant, is deemed to be a neutral factor. C. Similarities of Applicant’s mark to the cited marks As to this critical du Pont factor, we consider the marks of Applicant and of the cited registrants, and compare them “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) quoting du Pont, 177 USPQ at 567. As to appearance, Applicant places emphasis on the alleged distinctive nature of the large Maltese cross symbol included in its composite mark. However, as pointed Serial No. 85567720 - 14 - out by the Trademark Examining Attorney, the word portion of a composite mark is more likely to be impressed upon a purchaser’s memory and to be used when requesting the services. Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); see In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)). Thus, although we compare the respective marks in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar. In re Viterra Inc., 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Hence, the fact that Applicant’s mark contains this cross element is insufficient to obviate confusion. The cross is among the most important of Christian symbols, further emphasizing St. Luke as an early Christian healer.44 In this context, we accord very little distinction between the impressions one might draw from Applicant’s depiction of a Maltese cross and presentations of the traditional Latin cross. Both fit the dictionary definitions of a “cross.” Furthermore, we note that one of the registrants, St. Luke’s Regional Medical Center of Boise, appears to have a cross of four equidistant pieces contained within the larger depiction of a Latin cross, while the visual depiction of a cross in one of the marks of the other concurrent use registrant portrays upright and transverse pieces of identical lengths. 44 As requested by the Trademark Examining Attorney, we take judicial notice of the following entry taken from Dictionary.com, Unabridged, Based on the Random House Dictionary, http://dictionary.reference.com/browse/cross?s=t. Serial No. 85 Appl as its m Care,” i that wil cumbers includes of use o cited reg In co the term the regi consum Luke’s” Attorne upon th Whe in a sid in their 567720 icant also ark includ ts composi l not creat ome proce any comp f its healt istrations mparing t “St. Luke stered ma ers are gen is the firs y contende e mind of p n comparin e-by-side c entireties takes the es the wor te mark c e a burden ss.” By con ST CEN LIVER onent tha hcare serv “imply lar he marks ’s” was th rks. In ad erally mor t word in d that it otential co g marks, omparison that con position th ding “Conv reates “th to the con trast, App LUKE’S TER FOR DISEAS t creates t ices. Rath ge bureau , the Trad e dominan dition, the e inclined all of the is the term nsumers o the test is , but rathe fusion as - 15 - at inasmu enient e idea of q sumer by licant arg E ST H S ST he overall er, Applic cratic serv emark Ex t term in A Tradema to focus o se marks. “St. Luk f Applican not wheth r whether to the sou ch uick and having to ues, none o . LUKE’S EALTH YSTEM . LUKE’S commerci ant sugge ice provide amining A pplicant’s rk Examin n the first Thus, the e’s” that i t’s and bo er the ma the mark rce of th efficient ca commit to f the cited S WO M S MA R M al impress sts that by rs.” ttorney de mark as w ing Attorn word in a Tradema s likely to th Registra rks can be s are suffi e services re – a ser a lengthy registrati T. LUKE’S OD RIVE EDICAL CENTER T. LUKE’S GIC VALL EGIONAL EDICAL CENTER ion of the contrast termined ell as in a ey noted mark, and rk Exami be impre nts’ servic distingui ciently sim offered u vice and ons R EY ease , the that ll of that “St. ning ssed es. shed ilar nder Serial No. 85567720 - 16 - Applicant’s and Registrant’s marks is likely to result. Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); Edom Labs., Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). The focus is on the recollection of the average purchaser, who normally retains a general rather than specific impression of trademarks. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Applicant is correct in stating that the marks must be compared as a whole in determining likelihood of confusion, and not dissected. However, “there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” In re National Data Corporation, 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). See also In re Viterra Inc., 101 USPQ2d at 1908. The marks at issue all include the term “St. Luke’s.” This shared formative is important in our analysis inasmuch as St. Luke refers to an early disciple of Jesus Christ who was also a physician.45 Thus, in the context of medical related services, “St. Luke’s” creates in the minds of healthcare consumers an identical commercial impression, namely that of a well-known physician of the first century. Hence, we agree with the Trademark Examining Attorney’s analysis finding the term “St. 45 As requested by the Trademark Examining Attorney, we take judicial notice of the following entry taken from Dictionary.com, Unabridged, Based on the Random House Dictionary, http://dictionary.reference.com/browse/luke?s=t: Luke (noun) 1. an early Christian disciple and companion of Paul, a physician and probably a gentile: traditionally believed to be the author of the third Gospel and the Acts. Serial No. 85567720 - 17 - Luke’s” to be the dominant element in Applicant’s mark and in all of the cited marks. As the Trademark Examining Attorney correctly observes, the first part of a mark is often the “most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions. Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). See also Palm Bay, 73 USPQ2d at 1692. In addition, the wording “Convenient Care” within Applicant’s mark simply serves to describe a significant aspect of its services. The addition of descriptive matter generally does not serve to distinguish otherwise similar marks. In re Chatam Int’l Inc., 380 F.3d 1340, 1343, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (“Viewed in their entireties with non-dominant features appropriately discounted, the marks [GASPAR’S ALE for beer and ale and JOSE GASPAR GOLD for tequila] become nearly identical.”). Similarly, while the Registrants’ composite marks include terms such as “Center for Liver Disease,” “Health System,” “Medical Center,” “Regional Medical Center,” etc., these are not distinguishing elements as applied to health care services. Furthermore, the cited marks as adopted and used by the registrants do not appear to us to create connotations or commercial impressions that negate the possibility that their healthcare services may be relatively easy to access. Accordingly, while we acknowledge that the marks include some perceptible differences in appearances, we find that Applicant’s mark is confusingly similar to the cited marks when measuring the similarities as to connotation and commercial impression. The common element, St. Luke’s, is deemed to be dominant, such that Serial No. 85567720 - 18 - consumers would view Applicant’s mark as another variation on the registrants’ marks. In view thereof, the critical du Pont factor focusing on the similarity of the marks favors a finding of likelihood of confusion. D. Contemporaneous usage without evidence of actual confusion As evidence that confusion is not likely, Applicant also points to the eighth prong of the du Pont test, focusing upon the length of time during and the conditions under which there has been contemporaneous usage without evidence of actual confusion. Supporting the fact of a long period of co-existence, Applicant claims to have been operating under the name “St. Luke’s” since at least 1866, while one of the cited registrations claim first use dates as early as 1902. Yet, during much more than a century of co-existence, Applicant says it was unaware of any consumer confusion, and notes that the owners of the cited registrations have never challenged Applicant’s use of the term “St. Luke’s” or use of the applied-for composite mark. Based upon this consideration, Applicant contends that it is not likely that confusion would arise in the future. Of course, with registrants’ respective operations centered in Houston, TX and Boise, ID, and Applicant’s presence concentrated in suburban areas largely west of St. Louis, MO, we cannot know whether there have been services offered in the same relevant markets for a significant period of time such that, if confusion were likely to occur, it could be expected to have happened. See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992). Hence, Applicant’s allegation as to an absence of actual confusion is unpersuasive herein. Moreover, the reported lack of Serial No. 85567720 - 19 - any occurrences of actual confusion is not dispositive inasmuch as such evidence is notoriously difficult to come by. In any event, the test under Section 2(d) of the Trademark Act is likelihood of confusion, not actual confusion. See Giant Food, Inc., 218 USPQ at 39. Therefore, this du Pont factor, at best for Applicant, is deemed to be a neutral factor. E. Weighing the relevant du Pont factors Given that the parties’ “St. Luke’s” marks are quite similar as to connotation and overall commercial impression, and inasmuch as the respective services are in some cases overlapping, and in other cases closely-related health care services, which services will move through the same or closely-related channels of trade, we find that the Office has clearly demonstrated a likelihood of confusion herein. Decision: The refusal to register Applicant’s mark under § 2(d) of the Lanham Act is hereby affirmed.