Turning-Point Women's Healthcare, Inc.

Trademark Trial and Appeal Board

Feb 28, 2008

No. 78360812 (T.T.A.B. Feb. 28, 2008)

Mailed:
February 28, 2008
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UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re TurningPoint Women’s Healthcare, Inc.
________

Serial Nos. 78360812 and 78360815
_______

Erinn K. Robinson of Arnall Golden Gregory LLP for
TurningPoint Women’s Healthcare, Inc.

Colleen Dombrow, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Quinn, Walters and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

The Board is deciding the appeals in the two
applications at issue here in one opinion because the
applications involve the same applicant, related marks and
the same refusal.
TurningPoint Women’s Healthcare, Inc. (applicant) has
filed two applications to register the two related marks,
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78360812 and 78360815
2
TURNINGPOINT WOMEN’S HEALTHCARE in standard characters1 and
in the special form shown here2:

In both applications, applicant identifies its services as
“medical services, namely, physical therapy, and counseling
in the field of health, namely, medical counseling,
nutritional counseling, and psychological counseling,
related to the support and education of breast cancer” in
International Class 44. Both applications also include a
disclaimer of “WOMEN’S HEALTHCARE.” The application for
the special-form version of the mark includes the following
statements: (1) "The color(s) pink and black is/are
claimed as a feature of the mark."; and (2) "The mark
consists of the color black which appears on the wording
TURNING, on the letters P, I, N, T in the word point, and
on the wording WOMEN'S HEALTHCARE. The color pink appears
on the ribbon." Applicant identifies the ribbon design as

1 Application Serial No. 78360815, filed February 2, 2004,
claiming both first use of the mark anywhere and first use of the
mark in commerce on January 31, 2003.
2 Application Serial No. 78360812, also filed February 2, 2004,
and also claiming both first use of the mark anywhere and first
use of the mark in commerce on January 31, 2003.
Serial No. 78360812 and 78360815
3
“the universal symbol of breast cancer awareness.”
Applicant’s Brief at 5.3 The Examining Attorney has also
submitted examples of several prior registrations owned by
different parties which incoporate the ribbon design. See
attachments to the Final Office Action in Application
Serial No. 78360812.
The Examining Attorney has finally refused
registration in both applications under Trademark Act
Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of
confusion with two registrations owned by the same party,
Registration No. 2924974 for the mark TURNING POINT, which
issued on February 8, 2005, and Registration No. 2922634
for the mark TURNING POINT WEIGHT LOSS, which issued on
February 1, 2005. Both registrations claim first use of
the marks anywhere and first use of the marks in commerce
for all classes on July 27, 1996.
The TURNING POINT registration identifies the
following goods and services: “aromatherapy oils contained
in ampules” in International Class 3, “herbal products,
namely, aroma therapy ampules containing herbs used for
aroma therapy; dietary, nutritional and vitamin

3 All references in this opinion to Applicant’s Brief or the
Examining Attorney’s Brief relate to the briefs in Application
Serial No. 78360812.

Serial No. 78360812 and 78360815
4
supplements; wellness supplements, namely herbal
supplements” in International Class 5 and “providing
health, nutrition and diet information; health and evilness
advisory services, namely advice concerning general health
and well being” in International Class 44.
The TURNING POINT WEIGHT LOSS registration identifies
only the following services: “providing health, nutrition
and diet information; diet planning and supervision; health
and wellness advisory services, namely, advise (sic)
concerning general health and well being.” This
registration includes a disclaimer of “WEIGHT LOSS.”
Applicant has appealed the refusals in both
applications. Applicant and the Examining Attorney have
filed well written briefs. We affirm the refusals in both
applications.
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion…” 15 U.S.C. § 1052(d).
The opinion in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1977) sets forth the
factors to consider in determining likelihood of confusion.
Here, as is often the case, the crucial factors are the
Serial No. 78360812 and 78360815
5
similarity of the marks and the similarity of the goods and
services of the applicant and registrant. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976)(“The fundamental inquiry mandated by Section
2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [or services] and
differences in the marks.”). Below we will consider each
of the factors as to which applicant or the Examining
Attorney presented arguments or evidence.
Applicant has suggested that the Examining Attorney
failed to consider factors other than the similarity of the
marks and the relationship between the goods and services.
We believe the Examining Attorney did give appropriate
consideration to other factors. We too will give
appropriate consideration to all relevant factors in these
appeals.
The Goods and Services and Channels of Trade
The goods and services of applicant and the registrant
need not be identical to find a likelihood of confusion
under Trademark Act Section 2(d). They need only be
related in such a way that the circumstances surrounding
their marketing would result in relevant consumers
mistakenly believing that the goods or services originate
from or are associated with the same source. See On-Line
Serial No. 78360812 and 78360815
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Careline Inc. v. America Online Inc., 229 F.3d 1080, 56
USPQ2d 1471 (Fed. Cir. 2000); In re International Telephone
& Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Furthermore, in comparing the goods and services we
must consider the goods and services as identified in the
application and cited registrations. See Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is
legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods [or services] set forth in the
application [and registration] regardless of what the
record may reveal as to the particular nature of an
applicant’s goods [or services], the particular channels of
trade or the class of purchasers to which the sales of
goods [or services] are directed.”). See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods [or services].”).
In our analysis of the goods and services we will
restrict our discussion to the services, not the goods,
identified in the cited registrations because we find the
services most relevant for purposes of the comparison.
Serial No. 78360812 and 78360815
7
Applicant’s services are identified as “medical services,
namely, physical therapy, and counseling in the field of
health, namely, medical counseling, nutritional counseling,
and psychological counseling, related to the support and
education of breast cancer.” The services in the cited
registrations are identified as “providing health,
nutrition and diet information; health and evilness
advisory services, namely advice concerning general health
and well being” in the TURNING POINT registration and
“providing health, nutrition and diet information; diet
planning and supervision; health and wellness advisory
services, namely, advise (sic) concerning general health
and well being” in the TURNING POINT WEIGHT LOSS
registration.
We note at the outset that the cited registrations
separately identify certain services which relate
specifically to diet and nutrition and certain services
which relate to “general health and well being.” To state
the obvious, the latter category of services is very broad.
In its arguments applicant attempts to draw a stark
contrast between the services identified in the application
and the cited registrations by characterizing its services
and the registrant’s services in ways not specified in the
actual identifications.
Serial No. 78360812 and 78360815
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For example, applicant argues, “There is no evidence
that trained health professionals who provide medical care
to breast cancer patients also routinely distribute weight
loss supplements, and no reason to presume that consumers
would believe that such goods and services emanate from a
single source.” Applicant’s Brief at 11. Applicant argues
further that the fact that the identifications in both its
application and the cited registrations include a
“reference to nutrition” is not sufficient to find the
marks confusingly similar. Id. at 13. Applicant also
asserts that any overlap between the goods and services of
applicant and registrant is “de minimis.” Id. at 11.
In stating these arguments, applicant charactertizes
its services as “medical services offered to breast cancer
patients,” on the one hand, versus the registrant’s “weight
loss counseling and supplements,” on the other hand. Id.
at 12. Applicant argues further, “… the owner of these
[cited] registrations, Panda Herbal International, Inc.,
d/b/a Viable Herbal Solutions, is a developer,
manufacturer, and primary supplier of alternative and
complementary medicine herbal supplements. Further, Viable
Herbal Solutions, uses its TURNING POINT marks solely in
connection with weight loss supplements.” Id.
Serial No. 78360812 and 78360815
9
Applicant also implies that the individuals who render
its services are trained and licensed medical professionals
while the individuals who render the services identified in
the cited registrations are not.
The Examining Attorney argues that applicant’s
services and those identified in the cited registrations
are closely related. The Examining Attorney quite properly
emphasizes that the registrant’s services are identified
quite broadly and that we must compare the goods and
services as identified in the application and cited
registrations.
To support her argument the Examining Attorney also
provided examples from web sites of twenty or more cancer
centers to show that those centers offer a full range of
services to brest cancer patients, including dietary
information and nutritional counseling, as well as
services related to general health and well being. The
centers include Johns Hopkins, the University of
Pennsylvania, The John Wayne Cancer Center, the Mayo
Clinic, Cancer Treatment Centers of America, the Lombardi
Comprehensive Cancer Center at Geogetown University and the
Memorial Sloan-Kettering Cancer Center. See attachments to
Final Office Actions in both applications. This evidence
does show that both general counseling services and dietary
Serial No. 78360812 and 78360815
10
and nutritional counseling are integral parts of breast
cancer treatment programs.
We agree with the Examining Attorney and conclude that
applicant’s services and the services identified in the
cited registrations are closely related, and even
overlapping.
To the extent applicant argues that its services are
rendered in a particular setting and by individuals
possessing certain qualifications, and those circumstances
are not specified in applicant’s identification of
services, we cannot consider them. Likewise, to the extent
applicant argues that the registrant’s use of its mark is
restricted in some manner, including to certain trade
channels, and those limitations are not specified in the
registrations, we cannot consider those restrictions. In
re Bercut-Vandervoort & Co., 229 USPQ2d 763, 764 (TTAB
1986). As we indicated, we must confine our consideration
to the goods and services identified in the application and
the cited registrations. See, e.g., Octocom Systems, Inc.
v. Houston Computers Services Inc., 16 USPQ2d at 1787.
In our analysis of the identifications, we first note
that applicant’s identification includes “nutritional
counseling.” Applicant argues that its “nutritional
counseling” differs from that of the registrant because its
Serial No. 78360812 and 78360815
11
services are “medical” and rendered to breast cancer
patients. We reject applicant’s argument that its use of
“medical” in its identification effectively distinguishes
its nutritional services from those identified in the
registrations. This is a distinction without a difference.
We also reject the implication that the qualifications of
those who render applicant’s services differ significantly
from those identified in the registrations. There is
simply no basis in the wording of the respective
identifications to conclude that such a distinction exists.
Also, because there is no restriction in the cited
registrations as to the class of individuals the registrant
services, we conclude that the services identified in the
cited registrations could also be rendered for the benefit
of cancer patients, including breast cancer patients.
In fact, we can conclude from the wording of the
identifications alone that the services identified in the
application and cited registrations are closely related,
and even overlapping. Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002).
Both the application and the cited registrations include
virtually identical services related to nutrition: in the
application “nutritional counseling” and in the cited
registrations “providing health, nutrition and diet
Serial No. 78360812 and 78360815
12
information” and “diet planning and supervision.” Both the
application and the cited registrations include counseling
services: in the application “counseling in the field of
health, namely, medical counseling, nutritional counseling,
and psychological counseling” and in the cited
registrations “health and evilness advisory services,
namely advice concerning general health and well being” and
“health and wellness advisory services, namely, advise
(sic) concerning general health and well being.”
Furthermore, the Examining Attorney’s evidence related
to the cancer centers further confirms the relationhsip
between the services identified in the application and the
cited registrations.
Accordingly, we conclude that the services identified
in the application and both cited registrations are closely
related, and even overlapping.
Also, in view of the fact that the services, as
identified, are, at least in part, overlapping, we also
conclude that the channels of trade for the services are
necessarily overlapping. Canadian Imperial Bank v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987);
In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
Serial No. 78360812 and 78360815
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The Marks
In comparing the marks we must consider the
appearance, sound, connotation and commercial impression of
the marks at issue. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005).
While we must also consider the marks in their
entireties, it is entirely appropriate to accord greater
importance to the more distinctive elements in the marks.
As the Court of Appeals for the Federal Circuit observed,
“… in articulating reasons for reaching a conclusion on the
issue of confusion, 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. Indeed, this type of analysis appears to
be unavoidable.” In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
Furthermore, “… it is well established that the test
to be applied in determining likelihood of confusion is not
whether marks are distinguishable on the basis of a side-
by-side comparison but rather whether they so resemble one
another as to be likely to cause confusion, and this
necessarily requires us to consider the fallibility of
Serial No. 78360812 and 78360815
14
memory over a period of time. That is to say, the emphasis
must be on the recollection of the average purchaser, who
normally retains a general rather than a specific
impression of trademarks.”
We first compare the TURNINGPOINT WOMEN’S HEALTHCARE
mark in standard characters with the cited TURNING POINT
mark. Applicant argues that the inclusion of WOMEN’S
HEALTHCARE in its mark distiguishes its mark from the cited
mark. To support this argument, applicant relies on a
definition of “healthcare” which it had made of record:
“the prevention, treatment and management of illness and
preservation of mental and physical wellbeing through the
services offered by the medical and allied health
professionals.” Applicant’s Brief at 5. Applicant then
argues:
The term “HEALTHCARE” has a very specific
connotation and is an immediate indication to the
relevant consumer that Applicant is not offering
services that it could get at a health food
store. Rather, the term “HEALTHCARE” generally
is an indication that the consumer will have
access to services offered by licensed and
trained professionals that will help them
maintain or restore their health specifically as
it relates to breast cancer. The inclusion of
the “WOMEN’S HEALTHCARE” term in Applicant’s mark
differentiates the marks such that confusion is
unlikely.

Id. at 5-6.

Serial No. 78360812 and 78360815
15
Here again, in its attempt to distinguish the marks,
applicant resorts to characterizations of its services
versus those of the registrant, characterizations not
reflected in the application and cited registration, most
importantly the assertion that the registrant merely
operates a health food store. Based on these
mischaracterizations applicant posits that the respective
marks will be perceived differently. We find these
arguments unpersuasive.
When we compare applicant’s TURNINGPOINT WOMEN’S
HEALTHCARE mark with the cited TURNING POINT mark, we find
the marks highly similar. The only distinctive element and
the dominant element in both marks is the term TURNING
POINT. We note that TURNING POINT is also the first
element in both marks. Presto Products, Inc. v. Nice-Pak
Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)(“… [it is] a
matter of some importance since it is often the first part
of a mark which is most likely to be impressed upon the
mind of a purchaser and remembered.”). The nondistinctive
term WOMEN’S HEALTHCARE, which is disclaimed, is
insufficient to distinguish the marks. Applicant’s
argument that the marks are distinguishable is based
essentially in its entirety on applicant’s
mischaracterization of the respective goods and services
Serial No. 78360812 and 78360815
16
identified in the application and the cited registration.
In fact, WOMEN’S HEALTHCARE could just as easily describe
the services identified in the cited registration, as it
does applicant’s services.
Applicant has also argued that TURNING POINT is
suggestive, and therefore weak. To support this contention
applicant provided a definition of “turning point” as “the
point at which a very significant change occurs; a decisive
moment.” Id. at 8.
We concede for purposes of our analysis that TURNING
POINT is suggestive. However, TURNING POINT would convey
the same suggestive significance as applied to both
applicant’s services and those services identified in the
cited registration. More importantly, we do not have any
basis to conclude that TURNING POINT is a term which is so
commonly used in marks for the types of services at issue
here that consumers would look to other elements in the
marks to determine the source of the services. Cf. Knight
Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB
2005). Therefore, we conclude on this record that TURNING
POINT, though suggestive, is not weak and that it is
entitled to the protection afforded all registered marks.
Serial No. 78360812 and 78360815
17
Accordingly, we conclude that applicant’s TURNINGPOINT
WOMEN’S HEALTHCARE mark is highly similar to the cited
TURNING POINT mark.
We conclude likewise that applicant’s TURNINGPOINT
WOMEN’S HEALTHCARE mark is similar to the cited TURNING
POINT WEIGHT LOSS mark. While it is a somewhat closer
question, we conclude that the nondistinctive term WEIGHT
LOSS, which is also disclaimed, is insufficient to
distinguish the marks.
We now turn to the comparison of applicant’s special-
form version of TURNINGPOINT WOMEN’S HEALTHCARE to the
cited TURNING POINT mark. Applicant makes the same
arguments here with regard to the word elements; we have
discussed those arguments above. Applicant also argues
that the inclusion in its mark of the ribbon design,
signifying that its services relate to breast cancer,
effectively distinguishes the marks. Applicant goes so far
as to argue that the ribbon design is the dominant element
in its mark. We find this argument unpersuasive.
For purposes of our comparison of the marks we note
that here, as is generally the case, the word elements in
the respective marks are dominant because potential
purchasers commonly use word marks in requesting goods or
Serial No. 78360812 and 78360815
18
services. In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997).
Furthermore, applicant readily acknowledges that the
ribbon design is the universal symbol of breast cancer
awareness. As such, it cannot function as a source
identifier as a general proposition. Nor can it serve to
distinguish the services here. The foundation underlying
all of applicant’s arguments in this regard is that
applicant’s services relate to breast cancer and
registrant’s services do not. The identifications in the
cited registrations belie this premise. There is no
restriction in the cited registrations so limiting
registrant’s services. Therefore, there is likewise no
basis to conclude that the perception of the marks must
differ due to the inclusion of the ribbon design.
Accordingly, based on our determinations regarding the
ribbon design and our analysis above regarding the
comparison of the word elements in the marks, we conclude
that applicant’s special-form version of TURNINGPOINT
WOMEN’S HEALTHCARE is highly similar to the cited TURNING
POINT mark.
Finally we compare applicant’s special-form version of
TURNINGPOINT WOMEN’S HEALTHCARE to the cited TURNING POINT
WEIGHT LOSS mark. Here too, while it is again a somewhat
Serial No. 78360812 and 78360815
19
closer question, we also conclude here that the
nondistinctive term WEIGHT LOSS, which is also disclaimed,
is insufficient to distinguish the marks. Therefore, we
conclude that applicant’s special-form version of the
TURNINGPOINT WOMEN’S HEALTHCARE mark is similar to the
cited TURNING POINT WEIGHT LOSS mark.
Other Arguments/Factors
Applicant also argues that there is no likelihood of
confusion in this case because the registrant offers its
services through a single studio in Pennsylvania while
applicant offers its services exclusively in Georgia. We
reject this argument also. Again, we cannot consider this
extraneous evidence. In re Bercut-Vandervoort & Co., 229
USPQ2d at 764. Furthermore, the cited registrations are
prima facie evidence of, among other things, the
registrant’s exclusive right to use the registered marks in
connection with the identified goods and services
nationwide. Trademark Act Section 7, 15 U.S.C. § 1057.
Applicant’s suggestion that the registrant’s rights are
limited geographically represents an impermissible
collateral attack on the validity of the registrations
which we cannot consider in this ex parte appeal
proceeding. In re Dixie Restaurants Inc., 41 USPQ2d at
1534-35.
Serial No. 78360812 and 78360815
20
Finally, applicant argues that there is no likelihood
of confusion because patients select its services, not on
impulse, but with care due to the nature of the services.
While we generally agree that the services at issue here
would be selected with a certain degree of care, we
conclude that the level of care, when considered in view of
all relevant circumstances, would not diminish the
likelihood of confusion. Members of the general public are
potential users of the services of both applicant and
registrant. More importantly, here too applicant’s
arguments assume distinctions between the services of
applicant and registrant based on extraneous evidence and
assumptions, rather than on the services as identified in
the application and the cited registrations. As we have
stated repeatedly, we must confine our consideration to the
identified goods and services.
Conclusion
Finally, based on all evidence of record in this case
related to the du Pont factors, we conclude that there
would be a likelihood of confusion between applicant’s
TURNINGPOINT HEALTHCARE mark, both in standard characters
and in special form, and the cited TURNING POINT and
TURNING POINT WEIGHT LOSS marks when used in connection
with the respective identified goods and services. We
Serial No. 78360812 and 78360815
21
conclude so principally because the marks are similar and
the respective services are, at least in part, overlapping
and otherwise closely related.
Decision: We affirm the refusals to register the
marks under Trademark Act Section 2(d) in both applications
based on both cited registrations.