Cerner Corp.

Trademark Trial and Appeal Board

Jan 31, 2001

No. 75151569 (T.T.A.B. Jan. 31, 2001)

1/31/01
Paper No. 21
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Cerner Corporation
________
Serial No. 75/151,569
_______
William B. Kircher and Timothy C. Bickham of Shook, Hardy &
Bacon L.L.P. for Cerner Corporation.
Howard Smiga, Trademark Examining Attorney, Law Office 102
(Thomas V. Shaw, Managing Attorney).
_______
Before Hanak, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark HEALTH FACTS, in typed form, for goods
identified in the application (as amended) as “computer
software for use by healthcare institutions and health care
professionals in combining clinical data with claims based
billing data and data from public sources.”1
1 Serial No. 75/151,569, filed August 18, 1996. The application
is based on applicant’s allegation of bona fide intent to use the
mark, under Trademark Act Section 1(b).
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/151,569
2
The Trademark Examining Attorney has refused
registration on two grounds, under Trademark Act Sections
2(e)(1) and 2(d). The Section 2(e)(1) refusal is based on
the Trademark Examining Attorney’s contention that
applicant’s mark is merely descriptive of the goods
identified in the application. The Section 2(d) refusal is
based on the Trademark Examining Attorney’s contention that
applicant’s mark, as applied to applicant’s goods, so
resembles the mark HEALTH FACTS, previously registered on
the Supplemental Register for “periodically published news
sheet,”2 as to be likely to cause confusion, to cause
mistake, or to deceive.
When the Trademark Examining Attorney made the
refusals final, applicant filed this appeal. Applicant and
the Trademark Examining Attorney filed main briefs, and
applicant filed a reply brief. Applicant initially
requested an oral hearing, but subsequently withdrew that
request. No oral hearing was held. We reverse the
refusals to register.
We turn first to the Section 2(e)(1) mere
descriptiveness refusal. A term is merely descriptive of
2 Supplemental Register Registration No. 1,191,909, issued March
9, 1982, Section 8 affidavit accepted. The registrant is Center
for Medical Consumers and Health Care Information Inc.
Ser. No. 75/151,569
3
goods or services, within the meaning of Trademark Act
Section 2(e)(1), if it forthwith conveys an immediate idea
of an ingredient, quality, characteristic, feature,
function, purpose or use of the goods or services. See,
e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir.
1987), and In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217-18 (CCPA 1978). A term need not immediately
convey an idea of each and every specific feature of the
applicant's goods or services in order to be considered
merely descriptive; it is enough that the term describes
one significant attribute, function or property of the
goods or services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not in
the abstract, but in relation to the goods or services for
which registration is sought, the context in which it is
being used on or in connection with those goods or
services, and the possible significance that the term would
have to the average purchaser of the goods or services
because of the manner of its use. In re Bright-Crest,
Ltd., 204 USPQ 591, 593 (TTAB 1979).
Ser. No. 75/151,569
4
In support of his Section 2(e)(1) refusal, the
Trademark Examining Attorney has submitted the following
evidence:3
(1) Dictionary definition of “health” (Random House
Unabridged Dictionary of the English Language (2d Ed.
1987) at 882) attached to the Trademark Examining
Attorney’s first office action:
1. The general condition of the body or mind
with reference to soundness and vigor: good
health; poor health. 2. Soundness of body or
mind; freedom from disease or ailment: to
have one’s health; to lose one’s health. 3.
A polite or complimentary wish for a person’s
health, happiness, etc., esp. as a toast: We
drank a health to our guest of honor. 4.
Vigor; vitality; economic health.
(2) Dictionary definition of “fact” (Webster’s II New
Riverside University Dictionary (1994) at 460)
attached to the Trademark Examining Attorney’s first
office action:
1. Something put forth as objectively real.
2. Something objectively verified. 3.a.
Something with real, demonstrable existence
b. The
quality of being real or actual. 4.
Something carried out or performed.
3 We sustain the Trademark Examining Attorney’s objection to the
listing of third-party registrations submitted by applicant in
its Supplemental Request for Reconsideration (and resubmitted as
Exhibit A to applicant’s reply brief). As the Trademark
Examining Attorney has properly noted, third-party registrations
may not be made of record merely by listing them; soft copies of
the registrations, obtained from the Office’s records, are
required. See In re Total Quality Group Inc., 51 USPQ2d 1474
(TTAB 1999); In re Duofold Inc., 184 USPQ 638 (TTAB 1974). We
accordingly have given this listing of registrations no
consideration.
Ser. No. 75/151,569
5
(3) The following “representative sample” of 1,001
excerpted articles retrieved by the search “HEALTH
FACTS” from the ALLNWS file of the NEXIS
automated
database, attached to the Trademark Examining
Attorney’s final office action:4
The statistics, compiled last summer,
compared health trends in Massachusetts and
Somerville specifically. Following are some
health facts mentioned in the presentation.
Somerville death rates are similar to the
state’s: AIDS deaths and homicides both
dropped significantly from 1995 to … (The
Boston Globe, November 30, 1997);
HEADLINE: How to get every health fact you’ll
ever need (Redbook, November 1997);
Recently, Plauka shared some basic dental
health facts: Teeth, which form during the
third and sixth month of pregnancy[,] are
affected by the mother’s diet. Plaque, a
sticky, colorless … (The Virginian-Pilot
(Norfolk, VA), October 31, 1997);
Once again, the Seafood Board appreciates
coverage of the seafood health facts, and
would like to restate a quote from state
health experts regarding the risk that
mercury in fish presents. (The Advocate
(Baton Rouge, LA), October 18, 1997;
identical excerpt from The Times-Picayune,
September 26, 1997, also submitted by
Trademark Examining Attorney);
Breast health facts, survivors’ stories, news
and issues (including an article, “New Hope
for Breast Cancer Patients in Need of …”)
(Chattanooga Free Press, October 12, 1997);
4 We have not considered two of the excerpts submitted by the
Trademark Examining Attorney (story nos. 31 and 40), which are
from unpublished wire service reports. See, e.g., In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987) at n.6, and In re
Men’s Int’l Professional Tennis Council, 1 USPQ2d 1917 (TTAB
1986) at n.5.
Ser. No. 75/151,569
6
“Cardiovascular Health Fact Sheet.” Vitamin
Nutrition Information Service. Hoffman-la
Roche. Nutley, N.J. (Better Nutrition,
September 1997);
- Esquire asks Does Football Really Matter?
in its gridiron-heavy September issue.
- Mens Health fact: Football players
routinely take hits greater than 13 times the
force of gravity. Astronauts can black out
when gravity … (Sun-Sentinel (Fort
Lauderdale, FL, August 31, 1997);
What are the health facts that the EPA has
hidden? First, while asthma has been rising,
ground-level ozone rates have fallen
dramatically over the past 20 … (The
Washington Times, August 29, 1997);
The site offers details on how to find a
dentist; dental health facts; a dental
glossary; and an interesting essay titled …
(The Houston Chronicle, July 20, 1997);
The Women’s Hospital of Greensboro is
offering a program from 6:30 to 8:30 p.m.
July 29 to discuss common gynecological
problems every woman should know about.
“Intimate Health Facts” will present the
latest information about these problems along
with treatment options available. Discussion
topics will include endometriosis, fibroid
tumors, hysterectomy and sexually transmitted
diseases. A gynecologist will lead the
discussion and answer questions dealing with
these issues. (News & Record (Greensboro,
NC), July 13, 1997);
Test your knowledge of men’s health facts:
1. What health threat is the biggest killer
of men in the United States? In recent
years, male deaths from … (Pittsburgh Post-
Gazette, June 3, 1997);
… place, spend a week, maybe two, digging
ditches, repairing roofs, caring for the
sick, teaching basic health facts and
Ser. No. 75/151,569
7
witnessing your faith. But short-term
mission trips are a part of summer for
hundreds of Chattanoogans. They take … (The
Chattanooga Times, May 24, 1997).
Applicant’s software product, as set forth in the
application’s identification of goods, appears to be
essentially a clinical and practice management tool for use
by healthcare institutions and professionals. As applicant
asserts at page 8 of its main brief:
[a]pplicant’s goods are computer software that
specifically combines clinical data and claim
based billing data with information from public
sources. Such compilation and extraction of
information allows the user to examine its
performance in a context which allows for the
identification of the best practices,
guidelines and pathways to enable the user to
make better clinical and management decisions.
The Trademark Examining Attorney argues that HEALTH
FACTS is merely descriptive of the “subject matter” of
applicant’s software. “The goods allow for the input of
factual health-related information in order to ‘make better
clinical and management decisions.’ The subject matter in
the instant case clearly describes an ingredient, quality,
characteristic, function, feature, purpose or use of the
relevant goods, i.e., facts pertaining to health-related
information.” (Brief at 12.) We do not agree.
Ser. No. 75/151,569
8
Contrary to the Trademark Examining Attorney’s
assertion, the evidence of record does not demonstrate any
use of HEALTH FACTS in connection with software of the type
identified in the application, nor in connection with any
similar type of clinical and practice management tool
directed to healthcare professionals and institutions. In
most, if not all, of the NEXIS
excerpts, “health facts” is
used to refer to general-interest health information
directed to consumers, and not to the type of “clinical
data,” “claims based billing data” and “data from public
sources” which is the subject matter of applicant’s
software and which would be of specific interest to
healthcare institutions and professionals. Thus, this
evidence does not persuade us that applicant’s mark is
merely descriptive as applied to applicant’s goods. See In
re The Stroh Brewery Co., 34 USPQ2d 1796 (TTAB 1994).
For the same reason, it is not particularly probative
in this case that, with respect to the registration which
is the subject of the Trademark Examining Attorney’s
Section 2(d) refusal (see supra at footnote 2), the
registrant, Center for Medical Consumers and Health Care
Information Inc., was required to resort to the
Supplemental Register for registration of HEALTH FACTS for
its “periodically published news sheet.” The fact that
Ser. No. 75/151,569
9
HEALTH FACTS was found to be merely descriptive of
registrant’s news sheet is not dispositive of the question
of whether HEALTH FACTS is merely descriptive of
applicant’s goods in this case. See In re The Stroh
Brewery Co., supra at 1797. We are not persuaded by the
Trademark Examining Attorney’s argument to the contrary.
In summary, we find that HEALTH FACTS does not
describe any feature or aspect of applicant’s software with
sufficient particularity and directness to warrant a
Section 2(e)(1) refusal. Cf. In re Hutchinson Technology
Inc., 852 F.2d 552, 7 USPQ2d 1490 (Fed. Cir.
1988)(TECHNOLOGY too broad a term to be merely descriptive
of applicant’s particular goods). HEALTH FACTS certainly
is not the strongest of marks, but we find that, as applied
to applicant’s goods, it falls on the suggestiveness side
of the line, rather than on the mere descriptiveness side.
To the extent that the Trademark Examining Attorney’s
evidence and arguments raise any doubt as to that question,
we resolve that doubt, as usual, in favor of applicant.
See In re Atavio, 25 USPQ2d 1361 (TTAB 1992). We reverse
the Section 2(e)(1) refusal.5
5 Because applicant’s application is based on intent-to-use,
there are no specimens in the record demonstrating the nature of
applicant’s goods and the manner of use of the mark thereon. If,
after applicant submits its specimens with its Statement of Use,
it appears therefrom that applicant’s goods are nothing more than
Ser. No. 75/151,569
10
We also reverse the Trademark Examining Attorney’s
Section 2(d) reversal, which is based on the prior
Supplemental Register registration of HEALTH FACTS for
“periodically published news sheet.” 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 likelihood of confusion issue. See
In re E.I. du Pont de Nemours and Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). In considering the evidence of
record on these factors, we keep in mind that “[t]he
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.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
In this case, we find that applicant’s mark HEALTH
FACTS is identical to the cited registered mark. Normally,
when the applicant’s mark is identical to the cited
registered mark, that fact weighs substantially in favor of
a finding of likelihood of confusion. However, in our
likelihood of confusion analysis in the present case, the
a compendium or recitation of “health facts” of the type
described in the NEXIS
evidence, such new information might
provide a basis for issuing a new Section 2(e)(1) refusal.
Ser. No. 75/151,569
11
identity of the marks is essentially negated by the
weakness of the registered mark HEALTH FACTS. Although a
Supplemental Register registration may be a Section 2(d)
bar to issuance of a subsequent Principal Register
registration in appropriate cases, see In re The Clorox
Company, 578 F.2d 305, 198 USPQ 337 (CCPA 1978), we find
that this is not such a case.
As noted by the Board in In re Smith and Mehaffey, 31
USPQ2d 1531, 1533 (TTAB 1994), when the registration cited
as a bar in a Section 2(d) refusal is a Supplemental
Register registration, likelihood of confusion has normally
been found only where the applicant’s and the registrant’s
marks and goods are substantially similar. This is not
because a different likelihood of confusion standard or
analysis is applied in cases involving cited Supplemental
Register registrations, but rather because marks registered
on the Supplemental Register are in most cases merely
descriptive or otherwise weak, and thus are entitled to a
quite narrow scope of protection. See In re The Clorox
Company, supra; In re Central Soya Company, Inc., 220 USPQ
914 (TTAB 1984) and cases cited therein; and In re Hunke &
Jochheim, 185 USPQ 188 (TTAB 1975).
In this case, we find that applicant’s goods and the
goods identified in the cited Supplemental Register
Ser. No. 75/151,569
12
registration are dissimilar enough that no confusion is
likely to result from applicant’s and registrant’s uses of
their respective HEALTH FACTS marks on their respective
goods. We are not persuaded by the Trademark Examining
Attorney’s argument that applicant’s goods are encompassed
within, and thus legally identical to, the goods identified
in the cited registration. As noted by the Trademark
Examining Attorney, registrant’s identification of goods
does not limit registrant’s news sheet6 to any particular
subject matter, so we presume that the news sheet could
feature the same sort of clinical and practice management
information that is provided and/or utilized by applicant’s
software. However, even if applicant’s software and
registrant’s news sheet might pertain to the same subject
matter, the products are nonetheless different in nature
and application. A software program such as applicant’s is
an interactive management tool, while a news sheet such as
registrant’s is essentially a passive reference source.
Moreover, there is no basis in the record for
concluding that purchasers would be likely to assume that
applicant’s software product and registrant’s news sheet
6 Webster’s Third New International Dictionary (1993) defines
“newssheet” by listing “newspaper” and “newsletter” as synonymous
cross-references.
Ser. No. 75/151,569
13
are merely alternative versions of each other (differing
only as to the media in which they appear), or that they
are complementary products emanating from a single source.
There is no evidence that others in the industry offer both
a news sheet and a software program as alternative,
complementary, or otherwise related goods, or that
purchasers would expect such goods to emanate from a single
source.
In summary, applicant’s and registrant’s respective
goods are not legally identical, as argued by the Trademark
Examining Attorney, nor have they been shown to be the
types of goods which are so related that they would be
expected to emanate from a single source if they are
marketed under the weak mark HEALTH FACTS.
Additionally, although we presume (from the absence of
any restrictions in the cited registration’s identification
of goods) that registrant’s news sheet and applicant’s
software could be marketed in the same trade channels and
to the same classes of purchasers, we are persuaded by
applicant’s contention that the relevant purchasers, i.e.,
healthcare institutions and professionals, are sufficiently
sophisticated that they are not likely to be confused if
the encounter the weak mark HEALTH FACTS used on these
Ser. No. 75/151,569
14
essentially different products. Cf. In re Digirad Corp.,
45 USPQ2d 1841 (TTAB 1998).
After careful consideration of all of the relevant du
Pont evidentiary factors, we conclude that there is no
likelihood of confusion in this case. Applicant’s mark is
identical to registrant’s mark, but registrant’s mark is
not entitled to a scope of protection broad enough to
preclude registration of applicant’s mark for applicant’s
distinctly different and dissimilar goods.
Decision: The refusals to register under Trademark
Act Section 2(e)(1) and 2(d) are reversed.