Dignity Health

Trademark Trial and Appeal Board

Sep 17, 2015

No. 85484353 (T.T.A.B. Sep. 17, 2015)

This Opinion is not a
Precedent of the TTAB

Oral Hearing Held On: June 16, 2015
Mailed: September 17, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Dignity Health
_____

Serial Nos. 85473422 (parent); 85484353; 85486297; and 85486308
_____

John Hughes of Kilpatrick Townsend & Stockton LLP,
for Dignity Health
Benji Paradewelai, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
_____

Before Quinn, Wellington and Masiello,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Dignity Health (“Applicant”) has filed four applications and seeks registration on
the Principal Register of the following marks in connection with the following
services:
DIGNITY HEALTH (in standard characters)
Hospital services, providing information to others in the field
of hospital services in International Class 44;1

1 Application Serial No. 85473422 was filed on November 15, 2011, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as February 1, 2012,
under Section 1(a) of the Trademark Act.
Serial Nos. 85473422 (parent) et seq.
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Providing on-line computer databases in the field of hospital
services in International Class 44;2

Hospital services; providing information to others in the field
of hospital services; providing on-line computer databases in
the field of hospital services with selected medical content in
International Class 44;3 and

Hospital services; providing information to others in the field
of hospital services; providing on-line computer databases in
the field of hospital services with selected medical content in
International Class 44.4
The exclusive right to use of the word HEALTH was disclaimed by Applicant in
each of the four applications.
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act based on a likelihood of confusion
with the registered mark and services:
DIGNITY CONTINENCE SOLUTIONS (in standard characters)

2 Application Serial No. 85484353 was filed on November 30, 2011, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as June 10, 2013,
under Section 1(a) of the Trademark Act.
3 Application Serial No. 85486297 was filed on December 2, 2011, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as February 1, 2012,
under Section 1(a) of the Trademark Act.
4 Application Serial No. 85486308 was filed on December 2, 2011, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as February 1, 2012,
under Section 1(a) of the Trademark Act.
Serial Nos. 85473422 (parent) et seq.
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Educational services, namely, providing seminars and
workshops in the field of incontinence care, and distribution
of training material in connection therewith; medical
training and teaching; education services, namely, providing
hands-on opportunities for nursing staff in the field of
incontinence and resident care in International Class 41;
Geriatric health care management services; managed health
care services in International Class 44.5
The exclusive right to use of the wording CONTINENCE SOLUTIONS was
disclaimed by Registrant.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. An oral hearing was held on June 16,
2015. We reverse the refusal to register.
I. Applicable Law
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). See also In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The 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”). These factors, and any

5 Registration No. 4301923 issued on March 12, 2013.
Serial Nos. 85473422 (parent) et seq.
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other relevant du Pont factors in the proceeding now before us, will be considered in
this decision.
A. The similarity or dissimilarity of the marks in their entireties in terms
of appearance, sound, connotation and commercial impression.
We turn first to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 177
USPQ at 567. In comparing the marks, we are mindful that “[t]he proper test is not
a side-by-side comparison of the marks, but instead ‘whether the marks are
sufficiently similar in terms of their commercial impression’ such that persons who
encounter the marks would be likely to assume a connection between the parties.”
Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713,
1721 (Fed. Cir. 2012) (citation omitted). See also San Fernando Electric Mfg. Co. v.
JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d
mem., 972 F.2d 1353 (Fed. Cir. June 5, 1992). Finally, although we must compare
the marks in their entireties, it is a well-established principle that, in articulating
reasons for reaching a conclusion on the issue of likelihood of confusion, there is
nothing improper in stating that, for rational reasons, more or less weight has been
given to a particular feature of a mark. See In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
With the above principles in mind, we find each of Applicant’s marks is similar
to the registered mark inasmuch as the initial literal element of all marks is the
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term DIGNITY. The secondary term, HEALTH, in Applicant’s marks is, at least,
merely descriptive of Applicant’s hospital-related services and providing access to
hospital-related, online databases. Likewise, the secondary wording in Registrant’s
mark, CONTINENCE SOLUTIONS, merely describes an aspect or specific field of
care for registrant’s geriatric managed health care services. The respective,
descriptive wording has been disclaimed in the applications and the cited
registration. It is also well-settled that disclaimed, descriptive matter generally has
less significance in likelihood of confusion determinations. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting, In
re National Data Corp., 224 USPQ at 752 (“Regarding descriptive terms, this court
has noted that the descriptive component of a mark may be given little weight in
reaching a conclusion on the likelihood of confusion”); In re Dixie Rests. Inc., 105
F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); and In re Code Consultants,
Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less
significant in creating the mark's commercial impression”). Nonetheless, we note
that the secondary wording of the two marks, HEALTH and CONTINENCE
SOLUTIONS, contributes to noticeable differences between the marks in
appearance and sound.
We do not ignore the design element in Applicant’s two composite marks;
however, we are convinced that DIGNITY is more likely to make a stronger
impression on consumers. When a mark comprises both a word and a design, the
word is normally accorded greater weight because it would be used by purchasers to
Serial Nos. 85473422 (parent) et seq.
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request the goods or services. In re 1st USA Realty Professionals Inc., 84 USPQ2d
1581, 1586 (TTAB 2007). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 218
USPQ 198, 200 (Fed. Cir 1983)).
With respect to the connotations and overall commercial impressions of the
marks, there is, again, some similarity due to DIGNITY being the initial literal
element followed by descriptive wording. The word “dignity” is defined as: “the
quality or state of being worthy of esteem or respect … inherent nobility and worth:
the dignity of honest labor … poise and self-respect … stateliness and formality in
manner and appearance … the respect and honor associated with an important
position … a high office or rank.”6 In the context of both Applicant’s and
Registrant’s services, this term conjures a positive quality of the services, namely,
that patients will retain their dignity and will be respected throughout the course of
receiving medical treatment.
Ultimately, based on all the marks sharing the same initial literal term,
DIGNITY, as the primary and dominant literal element, they are similar in sight,
sound, connotation and commercial impression when considered in their entireties.
This factor therefore weighs in favor of finding a likelihood of confusion.

6 5 TTABVUE (submitted with Examining Attorney’s May 14, 2014 Office Action denying
the request for reconsideration).
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B. Weakness of the term DIGNITY; Number and nature of similar marks
in use in connection with similar services.
Applicant asserts that in spite of any similarity in the marks based on the
shared term DIGNITY there is no likelihood of confusion because the cited
registered mark is “conceptually and commercially weak, due to the descriptive
nature of the terms comprising the Cited Mark and the ubiquity of DIGNITY-
formative marks used in connection with health care-related goods/services.” Brief,
p. 6.
With respect to conceptual weakness, a mark (or component of a mark) may be
found to be conceptually weak and accorded less protection due to its non-unique
and strongly suggestive meaning. Here, there is ample evidence showing that
DIGNITY is a highly suggestive term in the fields of hospice, healthcare and
medical goods, and that consumers will easily understand the term as conveying a
positive characteristic of such services and goods. More specifically and as
previously stated in the context of the involved services, the term suggests that
patients will retain their dignity and will be respected throughout the course of
receiving medical treatment. This connotation is illustrated in several of the third-
party registered marks for services involving healthcare that were made of record
by Applicant. To wit:
LIVING WITH DIGNITY, REDEFINING HOPE for "Hospice palliative care
services;”7

HOPE IN-HOME CARE HELPING RETAIN INDEPENDENCE, DIGNITY,
AND QUALITY OF LIFE EVERY STEP OF THE WAY PROVIDING CARE

7 Registration Number 3435041.
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AND COMFORT IS WHAT WE DO BEST (& design) for "Home health care
services; home nursing aid services; home health aide and companion services;
respite and personal care services; providing private duty nurse care …;"8 and

CELEBRATING LIFE, DIGNITY AND INDEPENDENCE. for "Geriatric health
care management services; health care …”9

These registrations are probative for demonstrating the inherent weakness in
the term DIGNITY by showing that the term has a particular meaning or
significance in the relevant industry. Institut Nat. Des Appellations D'Origine v.
Vintners Int'l. Co., Inc., 958 F.2d 1574, 1581, 22 USPQ2d 1190, 1196 (Fed. Cir.
1992) (“Such third-party registrations show the sense in which the word is used in
ordinary parlance and may show that a particular term has descriptive significance
as applied to certain goods or services.”); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d
915, 189 USPQ 693, 694-95 (CCPA 1976); In re Sela Prods., LLC, 107 USPQ2d
1580, 1588 (TTAB 2013); In re Box Solutions Corp., 79 USPQ2d 1953 (TTAB 2006)
(“Third-party registrations can be used in the manner of a dictionary definition to
illustrate how a term is perceived in the trade or industry.”). In addition, and to
demonstrate that many other entities have sought to adopt this term in their
marks, Applicant submitted copies of the following 13 third-party registrations for
marks containing the term DIGNITY (or near equivalent) in connection with a
variety of medical goods and services:10

8 Registration Number 3691600.
9 Registration Number 4454044.

10 Attached to Applicant’s responses to various Office Actions during the prosecution of the
involve applications, see, e.g., response filed on September 26, 2013 for Application Serial
No. 85473422. We note that Applicant also submitted copies of two abandoned applications,
Serial Nos. 85473422 (parent) et seq.
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Mark
Registration
No. Int. Class/ Goods or Services
DAY OF DIGNITY 3696750
44: charitable services namely providing
medical services
DIGNITY 3650774
12: vehicle wheels, wheel chairs,
wheelchair cushions and pads
DIGNITY ID 3777530 40: nursing home identification tags
DIGNITY ID (stylized with design) 3778070 40: nursing home identification tags
DIGNITY 3944030 10: vascular access ports for medical use
RESTORING DIGNITY TO HOME CARE 4040608
35: retail and online store services
featuring medical supplies
DIGNITI 4502033
10, 44: integrated patient care system of
modular design; leasing of system
DIGNITY GOWN 4498499 10: medical gowns
DIGNITEES 3516897 25: in-hospital use shirts
DIGNITY LOVES COMPANY 3541137
10: medical treatment and recovery
garments
S.M.E.S. CARING FOR YOUR NEEDS
WITH DIGNITY AND RESPECT (stylized
with design) 3611634
35: retail store services featuring medical
equipment
DIGNITEE (stylized with design) 3649169
10: easy-access in-hospital use patient
examination shirts
THE CARING GENERATION
EMBRACING LIFE'S TRANSITIONS
WITH DIGNITY, CLARITY AND
STABILITY (stylized with design) 3967331
16, 38, 41: series of non-fiction books in
the field of medicine

Applicant also submitted internet evidence demonstrating the suggestive nature
of the word DIGNITY in the healthcare field. A description of a book titled “Dignity

which lack probative value, and an additional registration (Reg. No. 3161455,
DEFENDING DIGNITY, FIGHTING POVERTY.) which is for “Charitable fund raising
services, namely, raising money for humanitarian, agricultural, educational, environmental
and healthcare purposes, to aid people in foreign countries,” and thus only tangentially
involves health care.
Serial Nos. 85473422 (parent) et seq.
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in Healthcare: a Practical Approach for Nurses and Midwives,” states, “Dignity in
the care of patients and clients of all ages, whether in hospital or community
settings, is an area of increasing national and international importance and
concern.”11 A website for “Devices for Dignity” touts the ability of “Delivering
innovative solutions to support patients with long term conditions, preserving their
dignity and independence.”12
In sum, given the defined meaning of the word “dignity” and evidence showing
how this term is strongly suggestive of a desirable quality or characteristic of
healthcare, we agree with Applicant that this term is inherently less capable of
performing a source-identifying function. We hasten to add, however, that we do not
find the term to be descriptive and, in this regard, specifically disagree with
Applicant’s assertion that “[t]he cited mark is descriptive of the services offered.”
Brief, p. 6. Applicant’s argument, indeed, constitutes an impermissible collateral
attack on the cited registration. This is an ex parte proceeding, and “inasmuch as
the cited mark is registered on the Principal Register, we must assume that it is at
least suggestive.” In re Fiesta Palms, 85 USPQ2d 1360, 1363 (TTAB 2007) (citing In
re Dixie Rests., Inc., 41 USPQ2d at 1534-35).
The sixth du Pont factor is based on the principle that if a certain term appears
in many marks that are actually in use by separate entities and in connection with
similar services (or goods), consumers may look to other elements in the marks to
distinguish them. A party, Applicant in this case, may seek to show that a mark, or

11 Attached to Applicant’s responses filed in July 2012.
12 Id.; from website www.devicesfordignity.org.
Serial Nos. 85473422 (parent) et seq.
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component of a mark, is commercially weak and the significance of any similarity
based on the shared term is diminished because it plays less of a role in finding a
likelihood of confusion. That is, “the purpose of a defendant introducing third-party
uses is to show that customers have become so conditioned by a plethora of such
similar marks that customers ‘have been educated to distinguish between different
[such] marks on the bases of minute distinctions.”’ Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694
(Fed. Cir. 2005) (citation omitted); see also, Angelica Corp. v. Collins & Aikman
Corp., 192 USPQ 387, 393 (TTAB 1976).
During the prosecution of the involved applications, Applicant submitted website
printouts showing use of the word DIGNITY in trademarks in connection with
healthcare services, as well as other medical services and products. In addition,
Applicant submitted business listings for companies involved “in the healthcare
industry” that have the term DIGNITY (or a near equivalent term) in their
tradenames.13 In response to the Examining Attorney’s characterization of the
third-party usage evidence as limited to a few locality markets, Applicant asserts
that it has presented a “very large number of third-party uses of DIGNITY-
formative marks in the healthcare field” (emphasis in original) and that “even if
some of the third-party uses are limited to local markets, when all the numerous
local markets are viewed in the aggregate, it is clear that consumers across the
country are accustomed to seeing ‘DIGNITY’ used in the healthcare field, and

13 See, e.g., Applicant’s response to an Office Action filed on July 16, 2012 for Application
Serial No. 85473422 and September 26, 2013 response for Application Serial No. 85486308.
Serial Nos. 85473422 (parent) et seq.
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therefore look to other indicia to determine the source of such goods and services.”
Reply brief, p. 7.
In its brief, Applicant makes reference to the following examples of third-party
use that it submitted during the prosecution of the applications:14
1. A small business website (www.manta.com) listing for “Dignity
Healthcare, Inc.,” in the “health services” field, identifying the company’s
“single location” address in Summerfield, North Carolina with an
estimated 3 employees;

2. A small business website (www.manta.com) listing for “Dignity
Healthcare” in the “health services” field, established in 2005, and
identifying the company’s “single location” address in Las Vegas, Nevada
with an estimated “1 to 4” employees;

3. A website (www.healthcare.com) listing for a “Dignity Healthcare Llc”
with an address in Independence, Missouri;15

4. A website (www.dignityhealthsystems.com) printout containing the name
Dignity Health System, LLC” with a circular border and listing “Hospice
… Home Health … Adult Care,” as well as “Serving Utah, Salt Lake,
Davis and [illegible]”;

5. A website (www.dignity-healthcare.com) printout containing the name
“Dignity Home Health” with a description of services as “quality, cost
effective care through a staff of skilled professionals that include
registered licensed nurses, physical, occupational and speech therapists
and social workers”;

6. A website (www.dignityhealthcarellc.com) printout containing the name
“Dignity Healthcare” being described as “one of Kansas City’s health care
providers since 2004”;16

14 Attached as “Exhibit A” to Applicant’s July 2012 response to an Office action (during the
prosecution of each involved application).
15 The name and address are essentially the only substantive information provided in the
website printout; no information of record is placed under headings such as “Specialties …
Hospital Affiliations … Licenses.”
16 We note that this entity may be the same as that listed in the third example above
because both companies are named “Dignity Healthcare, LLC” and that Independence,
Missouri is essentially a suburb of Kansas City.
Serial Nos. 85473422 (parent) et seq.
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7. A website (www.dignityplus.com) printout containing the name “Dignity
Plus” with an address listed in Central Square, New York and being
described as a “licensed home health care agency whose goal is to provide
quality in-home care to our clients while maintaining their respect,
independence, and dignity”;

8. A website (www.dignityplace.com) printout containing the name “Dignity
Place” with an address listed in Acworth, Georgia and being described as
“one of Georgia’s non-profit home care providers, bringing certified hospice
and private and personal home health services to our patients”; and

9. A website (www.dignitycare.com) printout containing the name “Dignity
Care” and being described as “providing superior care to the elderly,
families and neighborhoods … locally owned and has been serving the
Boulder County [Colorado] community since 1997.”

Applicant also submitted “excerpts from [a] search report on third-party uses”
that includes business listings for forty-two (42) companies with “Dignity” as the
primary term in their company names in the health services field, including nursing
care.17 Although many of these companies are listed as having a handful of
employees, eight companies have more than $200,000 in “sales volume” and two
companies have more than $1,000,000. While there is uncertainty as to whether
these companies remain in existence, this evidence shows, at the very least, that a
considerable number of companies with DIGNITY in their tradenames have, at
least at one point in time, rendered health care services. Furthermore, as our
primary reviewing court recently cautioned, the Board must be mindful to
“adequately account for the apparent force of [third-party use] evidence,” regardless

17 Applicant does not state when the search report was completed; however, it appears to
have been conducted fairly recently inasmuch as at least one company is identified as “year
started 2011.” The listings appear to be from a Dun & Bradstreet database, e.g., the listings
have “D&B” reference numbers.
Serial Nos. 85473422 (parent) et seq.
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of whether “specifics” pertaining to the extent and impact of such use have been
proven. Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334, 115 USPQ2d
1671, 1674 (Fed. Cir. 2015).
Here, we find the record reflects that a significant number of entities have
sought to adopt or use the term DIGNITY in their business names or as part of a
slogan in connection with health-related services and goods, including healthcare,
hospice care, vascular access ports, wheelchairs, hospital gowns, physical therapy,
and general health services and medical devices. Although the extent of relevant
third-party use evidence does not rise to the same level as that shown in In re
Broadway Chicken Inc., 38 USPQ2d 1559 (TTAB 1996)18, a decision Applicant relies
upon, there is evidence here of third-party use of DIGNITY-formative marks in
connection with healthcare and health-related services and this must be considered
in our decision.
In sum, the term DIGNITY is inherently weak when used in connection with
healthcare services and this weakness is compounded by the evidence of third-party
use of DIGNITY-formative marks in connection with healthcare-related services. In
Juice Generation, the Federal Circuit labeled similar evidence as “powerful on its
face.” Juice Generation, Inc., 115 USPQ2d at 1674. The Federal Circuit reiterated
this message in Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v.

18 In the Broadway decision the Board noted that a search of the Dun & Bradstreet
database revealed “more than 500 entities providing restaurant, bar, or related services
under a trade name containing the term BROADWAY,” in addition to a substantial amount
of other evidence corroborating the existence and extent of the third-party use. Id. at 1560-
1561.
Serial Nos. 85473422 (parent) et seq.
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New Millennium Sports, S.L.U., No. 2014-1789, 2015 WL 4934553 (Fed. Cir. Aug.
19, 2015). Thus, on the record before us, we find that the similarity between the
marks based on this common term is lessened and consumers are likely to pay
attention to the additional, albeit descriptive, wording for purposes of
distinguishing the marks. Accordingly, we find that the sixth du Pont factor weighs
against a finding of likelihood of confusion.
C. The similarity or dissimilarity and nature of the services
In determining whether the services are related, it is not necessary that the
services of Applicant and Registrant be similar or competitive in character to
support a holding of likelihood of confusion; it is sufficient for such purposes that
the services are related in some manner and/or that conditions and activities
surrounding marketing of these services are such that they would or could be
encountered by the same persons under circumstances that could, because of the
similarities of marks used with them, give rise to the mistaken belief that they
originate from or are in some way associated with the same source. Coach Servs.,
Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722; Edwards Lifesciences Corp. v.
VigiLanz Corp., 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).
We must consider the services as they are described in the applications and
registration, regardless of what the record may reveal as to the particular nature of
the services, channels of trade or class of consumers. Octocom Systems, Inc. v.
Serial Nos. 85473422 (parent) et seq.
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Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990) (“The authority is legion that the question of registrability of an applicant’s
mark must be decided on the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to the particular nature of
an applicant’s goods, the particular channels of trade or the class of purchasers to
which the sales of goods are directed”).
With the aforementioned principles in mind, we find the record supports a
finding that Applicant’s “hospital services” are related to Registrant’s “geriatric
health care management and managed health care services. “Care management,” in
the field of healthcare, is described as a “focused approach to planning and giving
care to [those with healthcare needs].”19 The Examining Attorney submitted
excerpts from seven different third-party hospital (or healthcare provider) websites
advertising their hospital services as well as specialized geriatric care services.20
Several of these hospital and healthcare providers also expressly offer healthcare
management services or offer services that approximate healthcare management
services (e.g., touting their ability to provide “care management”; a “widely
recognized program designed to provide assessment and primary health care for
adults 60 and over”; and “an integrated model of care and case management”).

19 From Aurora Health Care website (www.aurorahealthcare.org);. It is also described as
“a set of activities designed to assist patients and their support systems in managing
medical conditions and related psychological problems more effectively, with the aim of
improving patients’ health status and reducing the need for medical services” (from
Michigan Care Management Resource Center website (www.micmrc.org)). Website
printouts attached to Office Actions issue on October 6, 2014.
20 Submitted with Office Actions issued in October 2013; see, e.g., Office Action issue on
October 18, 2013 in docket for Application Ser. No. 85484353.
Serial Nos. 85473422 (parent) et seq.
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While we cannot conclude that “hospital services” are identical to or inclusive of
“healthcare management” services, they are, at the very least, closely related.
There is very little to no evidence showing a relationship between Registrant’s
managed health care services and Applicant’s “providing information to others” and
“providing on-line computer databases” in the field of hospital services. However,
based on the descriptions of healthcare management services (see footnote 20), it is
implicit that these services include providing access to medical information and
access to computer databases to patients or participants in the healthcare
management programs. In other words, a patient or consumer of Registrant’s
services would likely need to access or encounter services such as Applicant’s
providing access to hospital information and databases.
D. The conditions under which and buyers to whom sales are made, i.e.,
“impulse” vs. careful, sophisticated purchasing.

Applicant argues that consumers of the respective services “are highly likely to
exercise extreme care in purchasing the services.” Brief, p. 19. As the Examining
Attorney correctly pointed out, there is no evidence that directly supports
Applicant’s contention regarding this higher degree of care that customers will
exercise. Nevertheless, and as Applicant argued on rebuttal, the Board has
previously recognized that consumers are likely to give more thought to expensive
decisions involving their personal health:
To state the obvious, there are few things more important in life than health
and well being, and it is beyond dispute that the decision to purchase
healthcare insurance and related services, such as HMO services, is a very
important decision for a person or a family to make. This decision will have
far reaching effects bearing on the quality of available healthcare services.
Serial Nos. 85473422 (parent) et seq.
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Moreover, it is common knowledge that the purchase of healthcare services
involves a substantial financial commitment; healthcare costs continue to
increase year after year. Inasmuch as this purchasing decision involves both
the quality of health care and a significant cost, purchasers will proceed
cautiously and deliberately in making their choice. … Simply put, in
purchasing healthcare services, even ordinary consumers are likely to
exercise greater care and will know with whom they are dealing.

Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas Inc.,77 USPQ2d 1492,
1503-1504 (TTAB 2005).
With this in mind, we agree it is likely that consumers will exercise a higher
degree of care than normal when selecting the respective services, and this du Pont
factor weighs against a finding of likelihood of confusion.
E. Balancing the factors.
Despite the facts that the marks share the same initial term DIGNITY and the
services being related in varying degrees, we find there to be no likelihood of
confusion. The word DIGNITY has been shown to be so weak in the field of
healthcare and other related services that we believe consumers will distinguish
Applicant’s marks from Registrant’s based on the dissimilarities between them,
including the respective wording HEALTH and CONTINENCE SOLUTIONS.
Keeping in mind the weakness of the common element, consumers are able to
distinguish DIGNITY HEALTH (in standard characters or stylized with a design)
from DIGNITY CONTINENCE SOLUTIONS as different sources of the respective
services. The fact that consumers exercise a higher degree of care in selecting
services involving their personal health also decreases the likelihood of confusion.
Decision: The refusals to register Applicant’s marks are reversed.