Family Pharmacare Center, Inc.

Trademark Trial and Appeal Board

Jun 22, 2001

No. 75327773 (T.T.A.B. Jun. 22, 2001)

06/22/01
Paper No. 16
HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Family Pharmacare Center, Inc.
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Serial No. 75/327,773
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James E. Bradley of Bracewell & Patterson, L.L.P.
for Family Pharmacare Center, Inc.
Virginia T. Isaacson, Trademark Examining Attorney, Law
Office 110 (Chris A.F. Pedersen, Managing Attorney).
_______
Before Cissel, Hohein and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Family Pharmacare Center Inc. has filed an application
to register the mark FAMILY PHARMACARE for “retail pharmacy
services, featuring prescription drugs, medicines, and
pharmaceuticals.”1
Registration has been finally refused under Section
2(d) of the Trademark Act on the ground of likelihood of
confusion with the mark PHARMACARE, which is registered for
1 Serial No. 75/327,773, filed July 18, 1997, claiming a first
use and first use in commerce date of March 8, 1993.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/327,773
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“computerized medical history and prescription services” in
Class 42 and “administration of employee pharmaceutical
benefits” in Class 36.2 The refusal has been appealed and
both applicant and the Examining Attorney have filed
briefs. An oral hearing was not requested.
We make our determination of likelihood of confusion
on the basis of those of the du Pont3 factors which are
relevant in view of the evidence of record. Two key
considerations in any analysis are the similarity or
dissimilarity of the respective marks and the similarity or
dissimilarity of the goods or services with which the marks
are being used. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976); In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999).
Looking first to the marks, the Examining Attorney
maintains that the marks PHARMACARE and FAMILY PHARMACARE
create similar overall commercial impressions. She argues
that the term FAMILY in applicant’s mark simply describes
the group for whom the pharmaceutical services are being
2 Registration No. 1,986,549, issued July 16, 1996, setting forth
a first use and first use in commerce date of May 13, 1988.
3 In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
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3
provided, making PHARMACARE the dominant portion of the
mark.
Applicant contends that the presence of the term
FAMILY in applicant’s mark significantly changes the sound,
appearance and meaning of applicant’s mark from
registrant’s mark and consequently the commercial
impressions created by the two marks. Applicant argues
that FAMILY PHARMACARE, when used in connection with an
actual pharmacy location conveys the image of a local shop,
whereas PHARMACARE, when used in connection with a service
provider marketing to health plans and employers conveys
the image of a major benefits management corporation.
While it is true that marks must be considered in
their entireties in determining likelihood of confusion,
when a newcomer has appropriated the entire mark of a
registrant and has added thereto a non-distinctive term,
the marks are generally considered to be confusingly
similar. In other words, if the dominant portion of the
marks is the same, then confusion is likely not-
withstanding peripheral differences. See In re Denisi, 225
USPQ 624 (TTAB 1985) and the cases cited therein.
Here, while there are obvious differences in the
marks in their entireties in terms of sound and appearance,
the presence of the additional term FAMILY in applicant’s
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mark is of minimal significance in the overall commercial
impression created by the mark. The term PHARAMACARE
clearly is the dominant portion of applicant’s mark, with
the term FAMILY being highly suggestive of those for whom
the services are being provided. As such, applicant has
done no more than appropriate registrant’s mark and add a
non-distinctive term thereto, which is not sufficient to
avoid a likelihood of confusion.
There are two exceptions which are made to the general
rule set forth in Denisi: (1) where the common portion is
not likely to be perceived as the source-distinguishing
portion due to its descriptiveness or the commonness of its
use, and (2) where the marks in their entireties convey
significantly different commercial impressions. Supra at
625.
Although applicant argues that the first exception
applies here in that the term PHARMACARE is weak or
descriptive, being “merely a shorthand for pharmaceutical
care,” we do not agree. Applicant has presented no
evidence of use of the telescoped term by others in
connection with pharmaceutical services. Thus, for
purposes of our analysis of the marks, we must assume that
the term PHARMACARE is a coined term, although suggestive
in nature of some aspect of pharmaceutical care, with no
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common use in the field. As such, PHARMACARE clearly
serves as a indicator of source.
Nor does the second exception apply. As previously
stated, the commercial impression created by the term
PHARMACARE is not significantly changed by the addition of
the term FAMILY. We find no reason whatsoever to adopt
applicant’s interpretations of the varying connotations of
the two marks. PHARMACARE remains a telescoped term,
conveying the suggestion that the services with which it is
used involve some aspect of pharmaceutical care. The
presence of the additional term FAMILY in applicant’s mark
does not alter this connotation. The overall commercial
impressions of the two marks are very similar.
Turning to the services involved in this case, we note
the general principle that the issue of likelihood of
confusion must be determined on the basis of the goods
and/or services as identified in the application and in the
cited registration(s). Canadian Imperial Bank of Commerce
v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed.Cir.
1987). It is not necessary that the goods and/or services
of the applicant and registrant be similar or even
competitive to support a holding of likelihood of
confusion. It is sufficient if the respective goods and/or
services are related in some manner and/or that the
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conditions surrounding their marketing are such that they
would be encountered by the same persons under
circumstances that could, because of the similarity of the
marks used thereon, give rise to the mistaken belief that
they emanate, or are associated with, the same source. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993)
and the cases cited therein.
From the identifications of services in the
application and registration, we find that a sufficient
relationship exists between the services of applicant and
registrant. Applicant offers “retail pharmacy services,”
which obviously involves the filling of prescriptions.
Registrant’s services include “computerized prescription
services,” which would also involve the filling of
prescriptions. Although a distinction may be drawn between
having one’s prescriptions filled at a retail store versus
obtaining the same via an on-line or other form of
computerized service, the service performed is essentially
the same and the end result is the same.
Applicant argues that registrant’s services are
directed to the management of employee pharmaceutical
benefits as a part of an employer’s health plan for its
employees and that only as a part of these services does
registrant offer “computerized medical history and
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prescription services.” Applicant has submitted specimens
from the registration file which applicant claims show that
registrant does not operate pharmacies or fill
prescriptions. Applicant contends that registrant simply
maintains a network of pharmacists and pharmacies that are
“in the plan” for use by members of the plan.
Looking at those specimens, however, we note that
registrant describes its services in connection with the
delivery of pharmacy benefits as including not only an
“accredited retail pharmacy network” but also “the option
of prescriptions-by-mail service.” Thus, even though the
pharmacies to which registrant’s plan members may go for
the filling of their prescriptions operate independently
from registrant and are merely accredited by registrant, at
the same time members have the option of having their
prescriptions filled directly by registrant through its
mail order service. In addition, the Examining Attorney
has made of record registrant’s Webpage which shows that
registrant offers to plan members the option of “order your
prescriptions online” as well as “find a pharmacy near
you.” Such as online service clearly exemplifies
registrant’s provision of “computerized prescription
services” as part of its own services, and that its
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services are not limited to referral to participating
pharmacies.
It is true that distinctions may be made between the
channels of trade for the two services, in that applicant’s
services involve a retail store, whereas registrant’s
computerized services may be offered over the Internet or
as part of its mail order service.
We cannot agree with applicant’s argument, however,
that a distinction can also be made between the consumers,
on the premise that registrant’s services are marketed only
to an employer who wishes to offer pharmaceutical benefits
to its employees and that pharmacy referral services are
simply part of registrant’s function as a benefits
management company. While registrant may market its
pharmaceutical benefit plan to employers, the ultimate
consumers of the benefits are the plan members, the
employees. These employees will encounter registrant’s
mark PHARMACARE while taking advantage of the
pharmaceutical benefits offered by the plan, one of which
is the option of ordering prescriptions directly from
registrant through a computerized prescription service.
These very same persons may well encounter applicant’s mark
FAMILY PHARMACARE should they elect the other option,
namely, filling their prescriptions in a retail pharmacy.
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We have no doubt but that, because of the similarity of the
respective marks, confusion as to source is likely.
The only other factor raised by applicant is that of
the lack of actual confusion, despite concurrent use for
nearly eight years. We can give little weight to this
fact, however, under the present circumstances. In the
first place, registrant has not had the opportunity to be
heard from on this point. See In re National Novice Hockey
League, Inc., 222 USPQ 638 (TTAB 1984). Second, we have no
information as to the extent of promotion or use by
applicant of its mark or whether it operates more than one
pharmacy, in other words, whether there has been any real
opportunity for confusion. See Gillette Canada Inc. v.
Ranir Corp., 23 USPQ2d 1768 (TTAB 1992).
Accordingly, on the basis of the similarity of the
overall commercial impressions of the marks PHARMACARE and
FAMILY PHARMACARE and the relationship found to exist
between registrant’s computerized prescription services and
applicant’s retail pharmacy services, we find that
confusion is likely to result from contemporaneous use of
the marks.
Decision: The refusal to register under Section 2(d)
is affirmed.
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