Bristol Hospital

Trademark Trial and Appeal Board

Sep 28, 2001

No. 75686460 (T.T.A.B. Sep. 28, 2001)

9/28/01 Paper No. 13
RLS/TW

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bristol Hospital
________

Serial No. 75/686,460
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Richard D. Getz of McCormick, Paulding & Huber, LLP for
Bristol Hospital.

Rebecca Gilbert, Trademark Examining Attorney, Law Office
113 (Meryl Hershkowitz, Managing Attorney).
_______

Before Simms, Chapman and Holtzman, Administrative
Trademark Judges.

Opinion by Simms, Administrative Trademark Judge:

Bristol Hospital (applicant), a Connecticut
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark shown
below

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/686,460
2
for occupational health services.1 The Examining Attorney
has refused registration under Section 2(d) of the Act, 15
USC § 1052(d), on the basis of Registration No. 2,032,006,
issued January 21, 1997, covering the mark shown below

for medical services for an insured employee of a company.
Applicant and the Examining Attorney have submitted briefs
but no oral hearing was requested.
We affirm.
The Examining Attorney argues that applicant’s mark
MEDWORKS (and design) and registrant’s mark MedWorks
(stylized) are nearly identical in sound, appearance and
meaning. It is the Examining Attorney’s position that the
word portion of applicant’s mark is more likely to be
impressed on a purchaser’s memory, and that the design in
applicant’s mark is not sufficient to avoid a likelihood of
confusion. With respect to the services, the Examining
Attorney contends that applicant’s occupational health
services and registrant’s medical services are very similar
medical services. In this regard, the Examining Attorney

1 Application Serial No. 75/686,460, filed April 19, 1999, based
upon allegations of use since December 31, 1988.
Ser. No. 75/686,460
3
has made of record a definition of the words “occupational
health” meaning “The promotion and maintenance of physical
and mental health in the work environment.” The Examining
Attorney argues that both registrant and applicant describe
their services broadly and without limitation as to the
class of potential purchasers. The Examining Attorney
contends that registrant’s medical services for employees
encompass applicant’s occupational health services. In any
event, the Examining Attorney argues that the services are
closely related. The Examining Attorney also points to
specimens of record in support of her argument that
employees are also exposed to applicant’s mark (on medical
records, for example).
Applicant, on the other hand, argues that confusion is
not “probable.” In this regard, applicant argues that the
respective marks are substantially different in appearance
and meaning, and that applicant’s mark has a hand and
hammer design as well. With respect to the services,
applicant maintains that its services are offered to
employers and not directly to employees.2 Employees would
not have an opportunity to confuse the marks or the

2 Earlier in the prosecution of this case, applicant had argued
that its mark is used in connection with occupational health
services rendered to hospital patients.
Ser. No. 75/686,460
4
services, according to applicant, because of the different
channels of trade in which the services travel. It is
applicant’s contention that the only common purchaser would
be a human resources procurement agent whose job involves
the procuring of health care for his or her employer.
However, that person would be relatively sophisticated,
according to applicant. Applicant also points to the fact
that its mark has been in use for twelve years, the last
seven of which have been concurrently with registrant’s
mark. During this period of time, applicant’s counsel
states that there have not been any instances of actual
confusion.
Concerning the lack of common purchasers, the
Examining Attorney contends that applicant has submitted no
evidence to show that employers would not purchase
registrant’s medical services offered to their employees.
Further, the Examining Attorney contends that, even if
applicant’s argument in this regard is true, employees are
the users and the beneficiaries of both applicant’s and
registrant’s services.
Upon careful consideration of this record and the
arguments of the attorneys, we agree with the Examining
Attorney that the respective marks and services are so
similar that confusion is likely. The respective marks
Ser. No. 75/686,460
5
would be pronounced identically and have similar commercial
impressions. Although applicant’s mark has a design
element, we do not believe that that design element will
avoid likelihood of confusion. Both marks are clearly
dominated by the identical term “MedWorks” or “Medworks.”
If these marks were used in connection with closely related
goods or services, confusion would be likely.
Turning to the respective services, we begin our
analysis by noting that the issue of likelihood of
confusion must be determined on the basis of the
descriptions of goods or services in the application and
the cited registration. While applicant in its argument
has attempted to limit its services to occupational health
services directed solely to employers, the description set
forth in its application is not so restricted. As
described, we believe that registrant’s medical services
for employees as well as applicant’s occupational health
services may be offered and sold to the same class of
purchasers—employees (or perhaps employers for the benefit
of their employees). Users or beneficiaries of
registrant’s medical services offered under the mark
MedWorks (stylized) who then encounter applicant’s MEDWORKS
(and design) occupational health services are likely to
believe that both registrant’s medical services and
Ser. No. 75/686,460
6
applicant’s closely related occupational health services
come from or are sponsored or endorsed by the same source.
With respect to applicant’s attorney’s contention that
there has been a period of concurrent use without any
instances of confusion, suffice it to say that this record
does not contain any information concerning the level of
sales and advertising of the respective services, or other
information showing that the same marks have in fact been
used in the same geographic areas such that there has been
an adequate opportunity for confusion to have arisen.
Decision: The refusal of registration is affirmed.