Columbia Healthcare Analytics, Inc.

Trademark Trial and Appeal Board

Apr 3, 2009

No. 77112566 (T.T.A.B. Apr. 3, 2009)

Mailed: April 3, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Columbia Healthcare Analytics, Inc.
________

Serial No.77112566
_______

Edward C. Schewe of Lauson & Schewe LLP for Columbia Healthcare
Analytics, Inc.

Shaila E. Settles, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Seeherman, Holtzman and Rogers, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Columbia Healthcare
Analytics, Inc. (applicant) to register the mark COLUMBIA
ANALYTICS, in standard characters, for services ultimately
identified as "analytical services, namely assessing blood
product utilization and determining the appropriateness of blood
THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 77112566
2
product transfusion for hospitals and healthcare providers" in
International Class 42.1 The term ANALYTICS is disclaimed.
The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the ground that applicant's mark, when applied to applicant's
services, so resembles the registered mark shown below for the
following services in Class 42 as to be likely to cause
confusion.2

Analytical services in the nature of chemical,
biological and environmental testing and analysis,
namely, analytical laboratory services, traveling
field analytical laboratory services, sampling

1 Application Serial No. 77112566, filed February 21, 2007, based on an
allegation of first use and first use in commerce on May 25, 2001. The
above identification was accepted by the examining attorney in her
Office action dated November 1, 2007. However, we note that this
amendment was never entered into the Office's electronic database, and
also that the examining attorney continued to refer to the original
identification of services in her brief. Nevertheless, the description
of services as set forth above is the operative identification in this
case.

2 Registration No. 2653827, issued November 26, 2002; Sections 8 and 15
affidavits accepted and acknowledged. The registration also includes
services in Classes 16, 35 and 41. The examining attorney, in her
final action and in her brief, limited her discussion of the refusal to
the services in Class 42 of the registration and moreover to specific
services identified in that class. Thus, we have confined our
discussion to the likelihood of confusion with respect to the specific
services in the cited registration that were discussed by the examining
attorney.
Serial No. 77112566
3
services for collecting samples of air, water,
groundwater, soil, industrial plant effluents, and
biologicals; industrial hygiene analytical services;
technical consulting services relating to chemistry
and chemical analysis; analytical laboratory quality
assurance consulting; environmental consulting
services; litigation technical support consulting;
expert witness services, in the field of chemistry,
analytical testing for chemicals, biologicals and
environmental contaminants, chemical quality
assurance; laboratory design consultation services;
consulting services relating to laboratory services
and automated laboratory services; consulting
services concerning laboratory data systems;
laboratory and field sampling and testing services
relating to screening various building materials,
earth, water and air for detection of dioxins, PCBs,
PAHs and other environmental pollutants; consulting
services concerning toxicology of environmental
pollutants.

The term "ANALYTICAL SERVICES" is disclaimed. The
registration includes the following description of the mark:
"The graphical design is a stylized laboratory beaker
schematically showing the acronym 'CAS.'"
When the refusal was made final, applicant appealed. Briefs
have been filed.3
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. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key

3 Applicant initially requested an oral hearing; however, the request
was subsequently withdrawn.
Serial No. 77112566
4
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (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 the differences in the marks."
Id., p. 29.
We turn first to a comparison of applicant's mark COLUMBIA
ANALYTICS with the registered mark shown below.

In determining the similarity or dissimilarity of marks, we
must consider the marks in their entireties in terms of sound,
appearance, meaning and commercial impression. See du Pont,
supra. See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The
test under this du Pont factor is not whether the marks can be
distinguished when subjected to a side-by-side comparison, but
rather whether the marks are sufficiently similar in terms of
their overall commercial impressions that confusion as to the
source of the services offered under the respective marks is
Serial No. 77112566
5
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general, rather than a
specific, impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). In addition, while
marks must be compared in their entireties, one feature of a mark
may have more significance than another, and in such a case there
is nothing improper in giving greater weight to the more dominant
feature. "Indeed, this type of analysis appears to be
unavoidable." In re National Data Corp., 753 F.2d 1056, 224 USPQ
749 (Fed. Cir. 1985).
The marks are similar in sound. The first word, COLUMBIA,
is identical in both marks, while the word ANALYTICS in the cited
mark and ANALYTICAL in applicant’s mark are extremely similar.
Registrant's mark includes the word SERVICES, but that word is
generic and it is insufficient to distinguish one mark from the
other.
Applicant argues that registrant's mark also includes the
letters "CAS" and contends that purchasers will "recollect
Registrant's 'CAS' design element and will use that term when
pronouncing the mark, i.e. 'CAS.'" We disagree. Although
registrant may have intended that the mark depict the letters
"CAS," the design is not clearly recognizable as those letters.
We find that the stylization of the letters is so extreme and
integrated into the design that it is more likely to be perceived
Serial No. 77112566
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purely as a design, rather than pronounceable letters.4 See
Georgia-Pacific Corp. v. Great Plains Bag Co., 614 F.2d 757, 204
USPQ 697, 772 (CCPA 1980) ("Registrant's mark...falls far short
of being considered a literal mark. That is, the letters 'GP'
have been so artistically arranged or incorporated in the overall
logo that, at first impact, the mark projects the image of a
distinctive design mark without any attempt by the viewer to
penetrate the intricacies of the design to uncover the letters
'GP' which would take on this significance only by reference to
respondent's trade name."); and In re TSI Brands Inc., 67 USPQ2d
1657, 1663 (TTAB 2002) 1663 ("because the degree of stylization
and integration of the letters forming both of registrant's 'AK'
and design marks is so high that they are more properly treated,
in our view, as being akin to pure design marks rather than
simply stylized displays of word marks."). The letters forming
the design element in registrant's mark are not recognizable as
"CAS," at least not without some careful study of the mark.
We acknowledge that the design itself, consisting at least
in part of the stylized representation of a laboratory beaker, is
a prominent feature of registrant's mark. Nevertheless, we find
that the design is less important than the word portion of the

4 We must determine the likelihood of confusion based on the mark as
shown in the registration, and the fact that registrant may actually
use the "CAS" acronym in a typed format on its website cannot affect
our determination.
Serial No. 77112566
7
mark in creating an impression. It is generally held that as
between words and a design, the words are normally accorded
greater weight because they would be used by purchasers to
request the goods or services. See In re Appetito Provisions
Co., 3 USPQ2d 1553 (TTAB 1987). Moreover, the stylized beaker
design does not significantly change the commercial impression
created by the wording COLUMBIA ANALYTICAL SERVICES. If
anything, it simply serves to reinforce the idea that
registrant’s services involve laboratory analysis.
The overall marks are also similar in connotation. We note
that the term COLUMBIA has a variety of meanings, none of which
seems to have any particular relationship to applicant’s or
registrant's services.5 The term appears arbitrary, at least on
this record, and thus, whatever meaning it has in the
registrant’s mark COLUMBIA ANALYTICAL SERVICES would apply to
applicant’s mark COLUMBIA ANALYTICS as well. In addition, the

5 "Columbia" is defined, inter alia, as 1. a river in SW Canada and the
NW United States, flowing...through Washington along the boundary
between Washington and Oregon and into the Pacific. ... 3. a city in
and the capital of South Carolina, in the central part. 99,296. 4. a
city in central Missouri. 62,061. 5. a city in central Maryland.
52,518. 6. a city in central Tennessee. 25,767. 7. a city in SE
Pennsylvania. 10,466. 8. Literary. the United States of America. 9. one
of an American breed of large sheep,... 10. (italics) U.S. Aerospace.
the first space shuttle to orbit and return to earth. Dictionary.com
Unabridged, based on the Random House Dictionary (Random House, Inc.
2009), from dictionary.reference.com. The Board may take judicial
notice of online reference works which exist in printed form or have
regular fixed editions. See Boston Red Sox Baseball Club LP v.
Sherman, 88 USPQ2d 1581, 1590 n.8 (TTAB 2008).
Serial No. 77112566
8
words ANALYTIC and ANALYTICAL are essentially equivalent terms,6
and although disclaimed, they further add to the overall
similarity of the marks as to connotation.
While there are differences between the marks, particularly
in appearance due to the beaker design in the registrant’s mark,
for the reasons discussed above we find that the beaker design is
not sufficient to distinguish the marks, and that the marks, as a
whole, are very similar in sound, meaning and commercial
impression, and that the similarities between the marks far
outweigh their differences.
We turn next to the question of whether applicant's and
registrant's services are sufficiently related and/or whether the
circumstances surrounding the marketing of the services are such
that purchasers encountering them would, in view of the
similarity of the marks, mistakenly believe that the services
emanate from the same source. See Monsanto Co. v. Enviro-Chem
Corp., 199 USPQ 590 (TTAB 1978) and In re International Telephone
& Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Applicant's services are "assessing blood product
utilization and determining the appropriateness of blood product
transfusion for hospitals and healthcare providers."

6 We take judicial notice of the following definition of "analytic"
from the Merriam-Webster Online Dictionary (2009) (merriam-
webster.com): "Variant(s): or analytical 1: of or relating to analysis
or analytics; especially : separating something into component parts or
constituent elements."
Serial No. 77112566
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Registrant's services, in relevant part, are "analytical services
in the nature of...biological...testing and analysis, namely,
analytical laboratory services, traveling field analytical
laboratory services, [and] sampling services for collecting
samples of...biologicals;.... consulting services relating to
laboratory services."
The examining attorney argues that the respective services
are related in that registrant's services noted above "are broad
enough to encompass applicant's services." She states that
"[t]his is so because the testing and analysis of biological
materials necessarily includes blood because blood is a
biological material." She concludes that "applicant and
registrant each engage in the analysis of biologicals or
biological materials." To support her position, the examining
attorney has submitted printouts from applicant's website,
columbia-analytics.com, as well as registrant's website,
caslab.com, which provide some general information about their
services.
Applicant argues, pointing to the information on its
website, that its services do not involve testing or analyzing
blood or the blood products themselves. Applicant contends that,
in contrast to registrant's services, applicant evaluates the
practices of hospitals and healthcare providers who utilize blood
products and give blood product transfusions, and determines
Serial No. 77112566
10
whether they are appropriate and necessary and cost effective.
We note that applicant's webpage shows, for example, the donor-
center supply costs for fresh frozen plasma units.
However, we are compelled to decide the question of
likelihood of confusion on the basis of the services set forth in
the application and registration, without limitations as to the
actual nature of the services, their channels of trade and/or
classes of purchasers that are not reflected therein. See J & J
Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d
1889, 1892 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (registrability is based on the identification
of goods "regardless of what the record may reveal as to as to
the particular nature of an applicant's goods...").
Based on the respective identifications, we find that the
services are, in part, related. In particular, applicant's
services described as "determining the appropriateness of blood
product transfusion," are broad enough to include such services
as, for example, testing blood to determine whether it is safe
for transfusion, or assessing prospective candidates for
transfusion to determine whether transfusion would be appropriate
and, if so, what would be transfused. Viewed as such, these
services involve assessment of biological materials and would
involve some degree of laboratory analysis, and therefore would
Serial No. 77112566
11
be related to registrant's broadly described "analytical
laboratory services."7 Applicant's argument that registrant's
services are directed solely to environmental services is
unavailing. Registrant's services may include environmental
services, but registrant's "analytical laboratory services" are
not limited to the environmental field, or to any particular
field, and it is impermissible for applicant to attempt to
restrict the services in this ex parte proceeding.
Furthermore, registrant's analytical laboratory services are
not limited to any particular purchasers or trade channels.
Thus, we must presume that such services are offered in all the
normal channels of trade to all the usual purchasers for such
services, including hospitals and healthcare providers to which
applicant's services are provided. See Interstate Brands Corp.
v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000).
We recognize that the purchasers of applicant's and
registrant's services would be sophisticated and knowledgeable
and that they would exercise a high degree of care in selecting
the services. However, even careful purchasers can be confused
as to source under circumstances where, as here, very similar
marks are used in connection with related services. See In re

7 To the extent that applicant's services would be more accurately
described as some form of medical management or administrative service,
such services may well fall within the scope of registrant's Class 35
services.
Serial No. 77112566
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Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir.
1986) citing Carlisle Chemical Works, Inc. v. Hardman & Holden
Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) ("Human
memories even of discriminating purchasers...are not
infallible.").
In view of the similarity of the marks, and because the
services, as well as the trade channels and purchasers for the
services must, in our analysis, be presumed to be related, we
find that confusion is likely.
Decision: The refusal to register under Section 2(d) is
affirmed.