Westmed Medical Group, P.C.Download PDFTrademark Trial and Appeal BoardFeb 20, 2013No. 85192504 (T.T.A.B. Feb. 20, 2013) Copy Citation THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: February 20, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Westmed Medical Group, P.C. _____ Serial No. 85192504 _____ Howard N. Aronson of Lackenbach Siegel LLP for Westmed Medical Group, P.C. Dezmona J. Mizelle-Howard, Trademark Examining Attorney, Law Office 110 (Chris A. F. Pedersen, Managing Attorney). _____ Before Cataldo, Lykos, and Masiello, Administrative Trademark Judges. Opinion by Masiello, Administrative Trademark Judge: Westmed Medical Group, P.C. filed an application to register on the Principal Register the mark THE FUTURE OF HEALTHCARE TODAY, in standard character form, for “Medical services; Physician services,” in International Class 44.1 The trademark examining attorney refused registration under § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, as used in 1 Application Serial No. 85192504, filed under Trademark Act § 1(a), 15 U.S.C. § 1051(a), on December 7, 2010, with a claim of first use and first use in commerce of September 22, 2009. Serial No. 85192504 2 connection with applicant’s services, so resembles the registered mark shown below, as to be likely to cause confusion, or to cause mistake, or to deceive. The cited mark is registered on the Principal Register for the following services in International Class 35: Managed care services, namely, electronic processing of health care information; Promoting the goods of others, namely, providing information regarding discounts, coupons, rebates, vouchers and special offers for the goods of others; Providing an internet-based database of patient medical information designed to facilitate patient- authorized, HIPAA-compliant sharing and maintenance of patient medical information amongst a patient's doctors such that this information can be directly inserted into the doctor's medical reports as a means of increasing medical record generation efficiency and accuracy.2 The cited registration includes a disclaimer of the exclusive right to use THE SMART MED CARD apart from the mark as shown. The colors white, blue and orange are claimed as features of the mark. When the refusal was made final, applicant filed a request for reconsideration, which was denied. This appeal ensued. Applicant and the examining attorney have filed briefs and applicant has filed a reply brief. As an initial matter, we note that the examining attorney has submitted evidence with her appeal brief. Such evidence is untimely and we have not considered it. “The record in the application should be complete prior to the filing of 2 Reg. No. 3774329, issued on April 13, 2010. Serial No. 85192504 3 an appeal. The Trademark Trial and Appeal Board will ordinarily not consider additional evidence filed with the Board by the appellant or by the examiner after the appeal is filed.” 37 C.F.R. § 2.142(d). See also TBMP § 1207.01 (3rd ed., June, 2012). We have considered all evidence that the examining attorney submitted up to and including her Office action denying applicant’s request for reconsideration. 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 issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and services at issue. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, the applicant and the examining attorney have also submitted evidence and arguments regarding classes of customers, trade channels, similar marks in use, the registrant’s normal field of expansion, and absence of actual confusion. We will first consider the similarity or dissimilarity of the marks at issue. Applicant rightly points out that in our analysis under Section 2(d) we must compare the marks at issue in their entireties. 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 a consideration of the marks in their entireties. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In any event, we agree with applicant Serial No. 85192504 4 that the wording THE SMART MED CARD is the dominant portion of the cited registered mark. This wording, though disclaimed, nonetheless receives prominent graphic emphasis in terms of size, position and stylization. It is also more likely to be used by customers in calling for the services, rather than the lengthier slogan that appears below it. We observe, in that regard, that the public viewing a mark is unaware of what, if any, portions thereof may be disclaimed in a federal registration. Id. Nonetheless, it is highly significant that applicant’s mark is contained in its entirety in the cited registered mark. The words THE FUTURE OF HEALTHCARE TODAY, as they appear in the registered mark, are identical in appearance, sound and meaning to applicant’s mark. The commercial impression created by this slogan is not altered in any way by its combination with the other elements of registrant’s mark. Where an applicant’s mark is included in its entirety in a registered mark, confusing similarity has often been found. See, In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (ML similar to ML MARK LEES); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406, 407 (CCPA 1967) (THE LILLY similar to LILLI ANN); In re United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (CAREER IMAGE similar to CREST CAREER IMAGES). In the present case, a five-word phrase consisting of eight syllables appears in each mark in identical order. This is a significant similarity that would very likely be noted by customers who are exposed to both marks. Prospective customers might well perceive applicant’s mark as a shortened form of Serial No. 85192504 5 the registered mark or as a free-standing use of the registrant’s tagline. United States Shoe, 229 USPQ at 709. Applicant contends that the registrant’s slogan is “barely visible in the Cited Mark.”3 However, it is indeed clearly visible on the registration certificate, and it is only reasonable to assume that in the marketplace registrant will display the mark in a scale in which the slogan is legible. We also take into consideration all other graphic elements of the registered design mark. However, we note that registrant’s slogan is presented in a plain, relatively common typeface. There is nothing in the record to indicate that applicant’s mark would be displayed in a typeface that is noticeably distinct from that of registrant. Applicant also argues, in essence, that the word HEALTHCARE in registrant’s slogan is descriptive and the remainder of the slogan is highly suggestive, thereby weakening the slogan’s importance as a source-indicating component of the registered mark. “This is not a case where the common words are coined or fanciful, and are thus inherently strong.”4 We disagree with this assessment. Although the reference to HEALTHCARE is suggestive of the applicant’s and registrant’s field of business, the suggested message that TODAY and THE FUTURE have become one is imaginative and non-literal. Accordingly, the slogan as a whole is distinctive. On the subject of the strength of the slogan, applicant makes reference to “a third mark in the relevant field on the Trademark Register having the words ‘THE FUTURE OF HEALTHCARE TODAY’,” to suggest 3 Applicant’s brief at 5, 7. 4 Applicant’s reply brief at 4. Serial No. 85192504 6 that “consumers can distinguish between marks that contain this phrase.”5 However, this registration has not been made of record and, in any event, it would not be probative evidence that the third-party mark is actually in use or that the public has become familiar with it. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011). Accordingly, we see no reason to consider the slogan weak as a source-indicator. Considering applicant’s mark and the cited registered mark in their entireties, we find the marks to be similar, because applicant’s mark is identical in sound, appearance, and meaning to a substantial distinctive portion of the registered mark. Accordingly, this du Pont factor weighs in favor of a finding of likelihood of confusion. We turn next to the similarity or dissimilarity of the services at issue. For purposes of demonstrating that the services of applicant and registrant are commercially related, the examining attorney has submitted certain third-party registrations purporting to show that services like those of applicant and registrant may emanate from a single source. The proffered third-party registrations are not of the type that might be considered probative under In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786 and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), because (with only a single exception) the 5 Applicant’s brief at 6, and fn. 1. The footnote indicates that the phrase in the third-party registration is actually THE FUTURE OF WOMEN’S HEALTHCARE… TODAY. Serial No. 85192504 7 services identified therein are different from those of applicant and registrant. Accordingly, we have not considered them. We will focus on the healthcare-oriented services of the registrant, as they are the most closely related to applicant’s “Medical services; Physician services.” Applicant emphasizes that the first clause of registrant’s recitation of services should not be interpreted to cover all “managed care services.”6 The point is well taken. A fair reading of this portion of the recitation is “electronic processing of health care information” rendered in the context of “managed care services.”7 The other healthcare-related services of registrant are (briefly) “Providing an internet- based database of patient medical information designed to facilitate patient- authorized… sharing and maintenance of patient medical information amongst a patient's doctors….” Applicant accurately points out that “Medical services; Physician services” are not included within the scope of the registrant’s services; there is no direct 6 Applicant’s brief at 7-8. 7 “Managed care” is defined as “Any arrangement for health care in which an organization, such as an HMO, another type of doctor-hospital network, or an insurance company, acts an intermediate between the person seeking care and the physician” (The American Heritage Dictionary of the English Language, retrieved on February 15, 2013 from http://www.credoreference.com/entry/hmdictenglang/managed_care); and “a system of health care (as by an HMO or PPO) that controls costs by placing limits on physicians' fees and by restricting the patient's choice of physicians” (Merriam-Webster Online Dictionary and Thesaurus, retrieved on February 15, 2013 from http://www.merriam- webster.com/dictionary/managed%20care). The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Serial No. 85192504 8 overlap. Applicant argues that its services “are related to the doctor-patient relationship itself,” while registrant’s services are “very specific administrative functions.”8 Applicant appears to suggest that while applicant’s services are directed to patients, registrant’s services are directed to doctors and medical administrators. A critical question is whether registrant’s services would be marketed to patients, as well as to doctors and administrators. We must presume that registrant’s services move in all channels of trade normal for those services, and that they are available to all classes of purchasers for those services. See Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). We find that electronic processing of health care information, in the context of a managed care operation, and the provision of a database that facilitates sharing of a patient’s medical information among doctors, as authorized by the patient, are services that would be of interest not only to doctors and administrators but to patients as well. A person who has been treated in a medical facility expects that records of his treatment will be maintained and that, upon his order, they may be transferred to a particular doctor for purposes of further consultation. We note that patient authorization is included as a significant element of registrant’s data maintenance and sharing service, as identified in the registration. Accordingly, we find that patients are among the classes of customers to whom registrant’s healthcare-oriented services 8 Applicant’s brief at 8, 9. Serial No. 85192504 9 may be marketed.9 We also find that applicant’s and registrant’s services may travel through some of the same trade channels. The context of managed care services is one trade channel through which medical and physician services are provided. That is the same context in which registrant’s information processing services are provided. Accordingly, we find that the du Pont factors relating to classes of customers and likely channels of trade weigh in favor of a finding of likelihood of confusion. Applicant refers to the file history of the cited registration to argue that registrant’s services are provided in connection with use of a “smart” medical card that contains patient medical information.10 Applicant has not made the file history of record, so it is not before us. However, the suggestion that registrant’s mark might appear on a card that is carried by a patient would support a finding of overlapping customer classes, rather than the opposite. For the reasons stated above, we find that the services of applicant and registrant are related, as they could be encountered by the same persons under circumstances that could give rise to the mistaken belief that they originate from or are in some way associated with the same provider, because of the similarity between the marks used with them. Edwards Lifesciences Corp. v. VigiLanz Corp., 9 Applicant argued during prosecution (but not in its brief) that customers for the services of applicant and registrant are likely to select the services with care and not on impulse. We are not persuaded that customers seeking medical and physician services exercise particular care. The selection of medical care is often made under emergency circumstances, and many patients lack the expertise to make a reasoned and careful choice of medical and physician services. There being no evidence on this point in the record, we treat this factor as neutral. 10 Applicant’s brief at 9. Serial No. 85192504 10 94 USPQ2d 1399. 1410 (TTAB 2010); Schering Corporation v. Alza Corporation, 207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corporation v. Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978). Accordingly, this factor also favors a finding of likelihood of confusion. Finally, applicant contends that its mark and the registrant’s mark have coexisted in the marketplace for two and one-half years with “no instances of confusion… reported to Applicant.” Applicant bases this time period on the dates of use stated in the cited registration.11 An uncorroborated statement of no known instances of confusion is entitled to little weight, especially in an ex parte context in which we have no input from registrant. See In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003). There is no probative evidence relating to the extent of actual use of applicant’s and registrant’s marks or showing whether there have been meaningful opportunities for instances of actual confusion to have occurred in the marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); and Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). The cited registration is not evidence that registrant’s mark has been in use since the stated date of first use. Productos Lacteos Tocumbo, 98 USPQ2d at 1934. Accordingly, the du Pont factor of the length of time during and conditions under which there has been contemporaneous use without evidence of actual confusion is considered neutral. 11 Applicant’s brief at 11. Serial No. 85192504 11 The examining attorney argues, with little elaboration, that applicant’s services are within the natural zone of expansion of the registrant’s services. There is no evidence of record to support this argument. Accordingly, we find this factor to be neutral. Having considered the evidence of record and all relevant du Pont factors, including those not specifically discussed herein, we find that applicant’s mark, as applied to applicant’s services, so closely resembles the cited registered mark as to be likely to cause confusion, mistake or deception as to the source of applicant’s services. Decision: The refusal to register is affirmed. Copy with citationCopy as parenthetical citation