Americare, Inc.

Trademark Trial and Appeal Board

Mar 9, 2005

No. 75861779 (T.T.A.B. Mar. 9, 2005)

Mailed:
March 9, 2004
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Americare, Inc.
________

Serial No. 75861779
_______

Myron Amer of the firm of Myron Amer, P.C., for Americare,
Inc.

David H. Stine, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Seeherman, Bucher and Holtzman, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Americare, Inc. seeks registration on the Principal
Register of the mark shown below:

for “home health care services” in International Class 42.1

1 Application serial no. 75861779 was filed on December 2, 1999
based upon applicant’s allegation of use in commerce at least as
early as May 1, 1989. Applicant’s brief refers to an amendment of
the recital of services to “healthcare supportive services for
elderly persons in assisted living facilities.” However, as
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75861779
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This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to register
this designation based upon Section 2(d) of the Trademark Act,
15 U.S.C. §1052(d).2 The Trademark Examining Attorney has held
that applicant’s mark, when used in connection with the
identified services, so resembles two registered trademarks,
in typed form, owned by the same entity, as follows:
A TRADITION OF CARING, for “providing home health care
services, physical and speech therapy, and housekeeping
and psychological counseling services,” in International
Class 42;3 and
A TRADITION OF CARING, for “newsletters concerning home
health care services, physical and speech therapy, and
housekeeping and psychological counseling services,” in
International Class 16,4

contended by the Trademark Examining Attorney in his appeal brief,
the record does not reflect such an amendment as having been timely
proffered by applicant, and hence, it was certainly never considered
by the Office.
2 Throughout most of the prosecution of this application, the
refusal to register had also been based upon likelihood of confusion
with a registration for the mark AMERICARE registered in connection
with “nursing home services” (Reg. No. 1829672 issued on April 5,
1994). Although the affidavit attesting to the continued use of the
mark within the period set forth in Section 8 of the Act should have
been filed before or during 2000, this registration was not
officially cancelled under Section 8 of the Trademark Act until
January 2005. Hence, the majority of applicant’s appeal brief of
September 2004 focused on the likelihood of confusion issues
surrounding this now-cancelled registration.
3 Reg. No. 1806575 issued to Chicago Home for the Friendless DBA
Family Care Services of Metropolitan Chicago on November 23, 1993,
based upon an allegation of use in commerce at least as early as
1982; section 8 affidavit accepted and section 15 affidavit
acknowledged; renewed.
4 Reg. No. 1809153 issued to Chicago Home for the Friendless DBA
Family Care Services of Metropolitan Chicago on December 7, 1993,
based upon an allegation of use in commerce at least as early as
June 1992; section 8 affidavit accepted and section 15 affidavit
acknowledged; renewed.
Serial No. 75861779
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as to be likely to cause confusion, to cause mistake or to
deceive.
The Trademark Examining Attorney and applicant have filed
appeal briefs. Applicant did not request an oral hearing
before the Board.
We affirm the refusal to register in connection with each
of the cited registrations.
In arguing for registrability, applicant alleges that the
Trademark Examining Attorney has violated the “anti-dissection
rule,” and that when these respective marks are considered in
their entireties, applicant’s mark creates a different
commercial impression from that of the cited marks.
By contrast, the Trademark Examining Attorney argues that
applicant’s mark is highly similar to the cited marks,
inasmuch as applicant appropriated the phrase in the
registered marks, A TRADITION OF CARING, in its entirety; that
this term is a salient portion of applicant’s mark; that the
respective services must be considered to be legally identical
and that registrant’s identified goods are specifically
related to applicant’s recited services; and that the
respective goods and services must be presumed to move within
identical trade channels.
Our determination under Section 2(d) is based upon an
analysis of all of the facts in evidence that are relevant to
Serial No. 75861779
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the factors bearing upon the issue of likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and
the relationship of the goods and/or services. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24 (CCPA 1976).
Turning first to the relatedness of the services as
described in the application and goods and services in the
cited registrations, applicant’s recital of services is
identical to the services in one of the cited registrations
and is closely related to the goods in the other cited
registration. Both applicant and registrant are providing
“home health care services.” The content of registrant’s
newsletters concerns home health care services, so
registrant’s newsletters must be deemed to be closely related
to applicant’s recited services. Indeed, in its brief,
applicant does not argue to the contrary.
Moreover, turning to the related du Pont factor dealing
with the similarity or dissimilarity of established, likely-
to-continue trade channels, given that neither applicant nor
registrant has placed any restrictions on their respective
channels of trade, we must presume that applicant’s services
and registrants’ goods and services will all move through the
Serial No. 75861779
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normal channels of trade to the usual consumers of goods and
services of the type identified. See Canadian Imperial Bank
of Commerce, National Association v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). Clearly,
identical services and such closely-related goods/services
must be presumed to be purchased by the same classes of
consumers.
Turning to a consideration of the similarities and/or
dissimilarities in the marks, we note at the outset that if
the services are identical, as is the case herein with one of
the cited registrations, “the degree of similarity [between
the marks] necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992).
Moreover, we agree with the Trademark Examining Attorney
that likelihood of confusion is not avoided between otherwise
confusingly similar marks merely by adding a house mark to
another’s mark. See In re Apparel Ventures, Inc., 229 USPQ
225 (TTAB 1986) [SPARKS BY SASSAFRAS for clothing held likely
to be confused with SPARKS for footwear]; In re The U.S. Shoe
Corp., 229 USPQ 707 (TTAB 1985) [CAREER IMAGE for clothing
held likely to be confused with CREST CAREER IMAGES for
uniforms]; and In re Riddle, 225 USPQ 630 (TTAB 1985) [RICHARD
Serial No. 75861779
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PETTY’S ACCU TUNE and design for automotive service stations
held likely to be confused with ACCUTUNE for automotive
testing equipment].
Applicant, in its amendments and request for
reconsideration filed April 26, 2004, offered to disclaim this
phrase.5 We agree with the Trademark Examining Attorney that
the entry of a voluntary disclaimer does not render
registrable a mark that is otherwise unregistrable under
relevant sections of the Trademark Act, including §2(d). See
In re MCI Communications Corp., 21 USPQ2d 1534 (Comm’r Pats.
1991). Accordingly, the Trademark Examining Attorney must
evaluate the entire mark, including any disclaimed matter, to
determine registrability. The marks must be considered in
their entireties when determining whether there is likelihood
of confusion. As noted by the Trademark Examining Attorney, a
voluntary disclaimer does not remove the disclaimed portion
from the mark for the purposes of this analysis. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985); Specialty Brands, Inc. v. Coffee Bean Distributors,

5 “Please enter of record the below disclaimer:
-- Applicant disclaims exclusive use of the slogan “a tradition
of caring” separate and apart from the mark as shown –- ”
It appears as if this disclaimer was, through inadvertence, not
previously entered into the electronic record for this application.
The disclaimer has now been entered. As is clear from the
discussion herein, the Trademark Examining Attorney did correctly
consider the effect of this disclaimer in reaching his position on
there being a likelihood of confusion with the cited marks.
Serial No. 75861779
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Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984); In re
Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214 (TTAB
2001).
Finally, applicant argues that the differences in the
styling of the letters as these phrases are actually used by
applicant and by registrant would help to distinguish the
respective marks. However, inasmuch as both of the cited
registered marks are in typed or standard character form,
registrant is free to adopt any style of lettering – including
lower-case lettering similar, or even identical, to that used
by applicant. See 37 C.F.R. §2.52(a); see also In re Melville
Corp., 18 USPQ2d 1386 (TTAB 1991); In re Pollio Dairy Prods.
Corp., 8 USPQ2d 2012 (TTAB 1988); Sunnen Prods. Co. v. Sunex
Int’l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987); United Rum
Merchants, Ltd. v. Fregal, Inc., 216 USPQ 217 (TTAB 1982).
In conclusion, given that the services are identical and
that applicant’s services are otherwise closely related to
registrant’s goods; that the respective goods and services
must be presumed to travel through the same channels of trade
to the same classes of consumers; and because applicant
appropriated in its entirety the phrase in the registered
marks, A TRADITION OF CARING, and then merely added its house
mark and a design element thereto, that the marks create a
Serial No. 75861779
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similar overall commercial impression; and hence, we find a
likelihood of confusion herein.
Decision: The refusal to register based upon Section
2(d) of the Trademark Act is hereby affirmed.