Gilbert Hospital, LLC

Trademark Trial and Appeal Board

Sep 22, 2009

No. 77070847 (T.T.A.B. Sep. 22, 2009)

Hearing: Mailed:
August 20, 2009 September 22, 2009
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Gilbert Hospital, LLC
________

Serial No. 77070847
_______

Sean K. Enos of Schmeiser, Olsen & Watts LLP for Gilbert
Hospital, LLC.

John C. Boone, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
_______

Before Holtzman, Walsh and Mermelstein, Administrative
Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

Gilbert Hospital, LLC (applicant) has applied to
register the mark DOOR TO DOC IN 31 MINUTES in standard
characters on the Principal Register for services
identified as “hospital services, namely, emergency
services and acute care services” in International Class
44.1

1 Application Serial No. 77070847, filed December 22, 2006, based
on a claim of first use of the mark anywhere and first use of the
mark in commerce on February 2, 2006.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 77070847
2
The Examining Attorney has issued a final refusal
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d),
based on a likelihood of confusion between applicant’s DOOR
TO DOC IN 31 MINUTES mark and the marks in the following
three active registrations owned by the same party:
Registration No. 3155358 on the Supplemental
Register, issued on October 10, 2006, for the
mark DOOR TO DOC in standard characters for
services identified as “consultation services in
the field of health care, namely, providing
assistance to health care facilities by improving
the flow and overall care quality of patients in
emergency room and ambulatory care facilities” in
International Class 44, claiming first use
anywhere and first use of the mark in commerce on
February 28, 2005;

Registration No. 3288783 on the Principal
Register, issued on September 4, 2007, for the
mark 60 TO 0 DOOR TO DOC in standard characters
for services identified as “consultation services
in the field of health care, namely, providing
assistance to health care facilities by improving
the flow and overall quality of care of patients
in emergency room and ambulatory care facilities”
in International Class 44, claiming first use
anywhere and first use of the mark in commerce on
February 28, 2005; and

Registration No. 3294991 on the Principal
Register, issued on September 18, 2007, for the
mark shown below for services identified as
“consultation services in the field of health
care, namely, providing assistance to health care
facilities by improving the flow and quality of
overall care of patients in emergency room and
ambulatory care facilities” in International
Class 44, claiming first use anywhere and first
use of the mark in commerce on February 28, 2005.
Serial No. 77070847
3

Applicant has appealed. Applicant and the Examining
Attorney have filed briefs. We reverse.
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “… which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods [or
services] of the applicant, to cause confusion….” 15
U.S.C. § 1052(d). The opinion in In re E.I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1977)
sets forth the factors to consider in determining
likelihood of confusion. Here, as is often the case, the
crucial factors are the similarity of the marks and the
similarity of the services identified in the application
and the cited registrations. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (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
differences in the marks.”).
Serial No. 77070847
4
The Services and Channels of Trade
In this case the services and the channels of trade
for those services are the dominant factors. Accordingly,
we consider those factors first. In general, the services
of applicant and the registrant need not be identical to
find a likelihood of confusion under Trademark Act Section
2(d). We may find the services to be related if the
circumstances surrounding their marketing would result in
relevant consumers mistakenly believing that the services
originate from or are associated with the same source. See
In re International Telephone & Telegraph Corp., 197 USPQ
910, 911 (TTAB 1978).
Furthermore, in comparing the services we must
consider the services as identified in the application and
cited registrations. Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods [or services].”).
The Examining Attorney argues that the services
identified in the application and the cited registrations
are related. The Examining Attorney states, “The examiner
does not argue that the services are identical or
necessarily competing. Rather, the examiner merely
Serial No. 77070847
5
maintains that the services are related because they serve
the same very specific field of emergency health care. The
parties’ services could be encountered by the same
consumers in the field, who would confuse the marks and the
source of the services.” Examining Attorney’s Brief at 10.
The Examining Attorney argues further, ”The parties’
services are closely related because the applicant and the
registrant both operate in the same field and provide
complementary services. … Moreover, given that the
registrant provides consultation services about emergency
room and ambulatory care facilities, hospitals and their
administrators are the most likely audience for
registrant’s services. The registrant thus directly
services entities like the applicant.” Id. at 11.
The Examining Attorney also posits a number of
“imagined” scenarios wherein hospitals and their
administrators would allegedly be confused. The only
evidence the Examining Attorney offers to support the
position that the services are related are two third-party
registrations which cover health care services, on the one
hand, and administrative support services, such as, medical
call center services and retail pharmacy services, on the
other hand.
Serial No. 77070847
6
The Examining Attorney also argues that an individual
in need of the medical services applicant provides might
mistakenly contact registrant, and consequently, possibly
suffer a delay in locating necessary medical services.
Applicant argues, “Applicant’s services are neither
similar nor related or indeed encompassed by or legally
identical to, the services recited in the cited
registration.” Applicant’s Brief at 3. Applicant
continues, “Registrant’s services are described as merely
consulting with a facility providing the emergency
services, while Applicant’s services are providing the
emergency services.” Id.
Applicant also argues that the services identified in
the cited registrations would be marketed to and provided
to health care facilities and that individuals who use
those health care facilities would not encounter the
registrant’s mark or services. In the converse situation,
applicant argues that its services are marketed to the
general public, that is, potential patients, and these
individuals are not potential customers for the health care
facility consultation services identified in the cited
registrations.
We find applicant’s arguments highly persuasive. The
channels of trade and the class of purchasers for the
Serial No. 77070847
7
respective services are distinct. The Examining Attorney
strains to posit a circumstance where the trade channels
might overlap or intersect, but he fails in this effort.
Furthermore, we find the third-party registrations not
probative of the issue at hand. Neither of the
registrations includes services of the type identified in
the cited registrations. Also, we have no other evidence
that the trade channels for the respective services overlap
in any way. Under the circumstances present here, we find
it unlikely that the potential customers for the health
care facility consultation services identified in the cited
registrations, that is, health care professionals, are
likely to associate the healthcare services applicant
provides with the registrant. In re Shipp, 4 USPQ2d 1174,
1176 (TTAB 1987).
Lastly, we have no evidence that a potential patient
might somehow mistakenly contact the registrant instead of
applicant in attempting to access health care services.
Even if such a mistake were to occur, we question whether
the mistake would be the result of trademark confusion.
Such a mistake would not necessarily indicate that the
individual believed that either applicant or registrant was
the source of both types of services. Therefore, we reject
this argument.
Serial No. 77070847
8
Accordingly, we conclude that the services identified
in the application and the cited registration move through
distinct trade channels to distinct classes of consumers,
and therefore, that they are not related. Furthermore, we
find that the distinction between the respective services
is such that confusion would be unlikely even if similar
marks were used with the respective services. Nonetheless,
for completeness, we will proceed to consider the marks
briefly.
The Marks
In comparing the marks in their entireties we must
consider the appearance, sound, connotation and commercial
impression of the marks at issue. Palm Bay Imports Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Also, “… it is well established that the test to be
applied in determining likelihood of confusion is not
whether marks are distinguishable on the basis of a side-
by-side comparison but rather whether they so resemble one
another as to be likely to cause confusion, and this
necessarily requires us to consider the fallibility of
memory over a period of time. That is to say, the emphasis
must be on the recollection of the average purchaser, who
normally retains a general rather than a specific
Serial No. 77070847
9
impression of trademarks.” Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975) (internal citations
omitted).
Applicant’s mark is DOOR TO DOC IN 31 MINUTES in
standard characters. The cited marks are DOOR TO DOC in
standard characters, 60 TO 0 DOOR TO DOC in standard
characters, and 60 TO 0 DOOR TO DOC and design.
The first cited mark, DOOR TO DOC. is arguably the
mark most similar to applicant’s mark. The registration
for DOOR TO DOC is on the Supplemental Register, which
indicates that the mark is not inherently distinctive, and
presumably somewhat weak. Under the circumstances of this
case, we conclude that applicant’s mark and the cited DOOR
TO DOC mark would not be confused, due to the apparent
weakness of the cited mark and the additional element, IN
31 MINUTES, in applicant’s mark. In reaching this
conclusion, we admittedly find it difficult to assess the
similarity of the marks apart from the distinctions we have
found between the respective services – the overriding
factor in our analysis.
Likewise, when we compare applicant’s mark to each of
the cited 60 TO 0 DOOR TO DOC marks, we conclude that they
are not similar. In the case of these registrations, 60 TO
0 serves to distinguish the marks still further from
Serial No. 77070847
10
applicant’s mark. Here again, the distinction between the
respective services is overriding.
Conclusion
Finally, after considering all evidence and arguments
bearing on the du Pont factors, including any we have not
specifically discussed here, we conclude that there is not
a likelihood of confusion between applicant’s DOOR TO DOC
IN 31 MINUTES mark when used in connection with “hospital
services, namely, emergency services and acute care
services” and the registered DOOR TO DOC, 60 TO 0 DOOR TO
DOC, and 60 TO 0 DOOR TO DOC and design marks when used in
connection with “consultation services in the field of
health care, namely, providing assistance to health care
facilities by improving the flow and overall quality of
care of patients in emergency room and ambulatory care
facilities.”
Decision: We reverse the refusal to register
applicant’s mark under Trademark Act Section 2(d).