Goldoro Developments LLC

Trademark Trial and Appeal Board

Aug 6, 2020

88409893 (T.T.A.B. Aug. 6, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 6, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Goldoro Developments LLC
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Serial No. 88409893

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David L. Principe of Phillips Lytle LLP
for Goldoro Developments LLC.

Oreoluwa Alao, Trademark Examining Attorney, Law Office 108,
Kathryn E. Coward, Managing Attorney.
_____

Before Zervas, Bergsman and Lynch,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Goldoro Developments LLC (“Applicant”) seeks registration on the Principal
Register of the mark

for the following International Class 44 services:
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medical imaging services; medical ultrasound imaging
services; medical imaging services, namely, computed
tomography imaging services; medical imaging services,
namely, magnetic resonance imaging services; X-ray
examination services for medical purposes, medical
radiology services.
The mark is described as consisting of “the words ‘bluewater radiology’ above a
pair of wave figures.” Color is not claimed as a feature of the mark. Applicant
disclaimed the exclusive right to use “Radiology.”
The Examining Attorney refused registration pursuant to Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark is likely to
cause confusion with the composite mark

registered on the Principal Register for “health care services for people and not in the
field of cosmetic dentistry” in International Class 44.1 “Medicine” and “M.D., P.A.”
have been disclaimed.
After the Examining Attorney issued a Final Office Action, Applicant appealed
and requested reconsideration. The Examining Attorney denied Applicant’s request
for reconsideration, the appeal was resumed and Applicant and the Examining
Attorney filed briefs. We affirm the refusal to register.

1 Registration No. 2773626 registered on October 14, 2003, renewed.
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Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on an
analysis of the probative facts in evidence that are relevant to the factors bearing on
a likelihood of confusion. See In re E. I. DuPont DeNemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973) (“DuPont”); see also Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005);
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). 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 services] and differences in the
marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24, 29 (CCPA 1976). We must consider each DuPont factor for which there is evidence
and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160,
1162-63 (Fed. Cir. 2019). “[E]ach case [however] must be decided on its own facts and
the differences are often subtle ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d
1197, 177 USPQ 386, 387 (CCPA 1973).
I. The Services
The first DuPont factor we consider is the similarity or dissimilarity (or
relatedness) of Applicant’s and Registrant’s respective services. DuPont, 177 USPQ
567. Registrant’s recitation of services — health care services for people and not in
the field of cosmetic dentistry — is broad and encompasses all of Applicant’s services,
which are various types of medical services that are not in the field of cosmetic
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dentistry.2 Where services are broadly identified in an application or registration, “we
must presume that [those] services encompass all services of the type identified.” Sw.
Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); see also In re
Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018) (where the goods in
an application or registration are broadly described, they are deemed to encompass
all the goods of the nature and type described therein).
In addition, likelihood of confusion can be found “if the respective products [or
services] are related in some manner and/or if the circumstances surrounding their
marketing are such that they could give rise to the mistaken belief that they emanate
from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1722 (Fed. Cir. 2012). The Examining Attorney submitted
evidence from third-party websites showing a single entity providing health care
services and medical imaging services under the same mark. See:
• https://atriumhealth.org/
- medical imaging services as a component of health care
and medical services, referring to “your healthcare team”
(July 18, 2019 Office action, TSDR 4-7);

2 “Healthcare” is defined as “the prevention and treatment of illness or injury, esp. on a
comprehensive, ongoing basis” in Webster's New World College Dictionary (5th ed. 2014)
(accessed at https://www.yourdictionary.com/healthcare on July 30, 2020). We take judicial
notice of this definition. The Board may take judicial notice of dictionary definitions, Univ. of
Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed
format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Healthcare services encompass medical services.
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• https://colletonmedical.com/home/
- medical imaging services and health care and medical
services, stating, “We take your healthcare needs very
seriously” (July 18, 2019 Office action, TSDR 8-10);
• https://www.novanthealth.org/
- medical imaging services and health care and medical
services stating, “each element committed to delivering a
remarkable healthcare experience for you and your
family.” (July 18, 2019 Office action, TSDR 11-13);
• http://www.saintlukeshospital.com/
- medical imaging services and health care and medical
services (July 18, 2019 Office action, TSDR 14-17);
• http://www.mcbg.org/
- medical imaging services and health care and medical
services, stating, “providing medical services, health care
and health information for Bowling Green” (July 18, 2019
Office action, TSDR 18-20).
• https://www.adventhealth.com/hospital/
- health care and medical services encompassing medical
imaging services, stating “has provided state-of-the-art
health care and medical services to the community.”
(August 28, 2019 Office action, TSDR 3-5).
• https://www.fcmcpa.org/medical-services
- home health services, Long-Term Care and imaging
services such as magnetic resonance imaging (August 28,
2019 Office action, TSDR 9).
• https://www.umassmemorialhealthcare.org/
- primary care and radiology and imaging services (August
28, 2019 Office action, TSDR 11).
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In view of the foregoing, we find that the services are legally identical and also
related, and that the DuPont factor regarding the similarity or dissimilarity (or
relatedness) of the services strongly favors a finding of likelihood of confusion.
II. Trade Channels and Classes of Purchasers
In our inquiry under the DuPont factor regarding trade channels and classes of
purchasers, we look to the identification of services of the application and the cited
registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
1321, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Systems Inc. v. Hous.
Computers Servs. 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 [or services] set forth in the
application regardless of what the record may reveal as to the particular nature of an
applicant's goods [or services], the particular channels of trade or the class of
purchasers to which the sales of goods [or services] are directed.”); Paula Payne Prods.
v. Johnson Publ'g 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 services involved herein do not contain any limitations restricting trade
channels to a particular field or to a particular class of purchasers, and we may not
read any limitations into them. See Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ
937, 940 (Fed. Cir. 1983). “[I]t is well established that, ‘absent restrictions in the
application and registration …, services are presumed to travel in the same channels
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of trade to the same class of purchasers.’” See In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press,
Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). The In re Viterra
presumption is applicable in this case because we have found that Applicant’s
services are encompassed within Registrant’s services. In addition the third-party
website evidence submitted by the Examining Attorney demonstrates that
Applicant’s services may be offered via the same virtual marketplace (that is, on the
same websites by the same entity) to all relevant classes of purchasers, i.e., referring
medical professionals and individuals in the general population seeking health care.
Thus, we weigh the DuPont factor regarding the similarity of trade channels and
purchasers in favor of a finding a likelihood of confusion.
III. The Marks
Next, we address the DuPont factor concerning the similarity or dissimilarity of
the marks, comparing the marks “in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imps., 73 USPQ2d at 1691
(quoting DuPont, 177 USPQ at 567). In cases such as this, where Applicant's services
are encompassed by and legally identical to the services recited in the cited
registration, the degree of similarity between the marks which is required to support
a finding of likelihood of confusion is less than it otherwise would be if the services
were not identical or highly similar. Century 21 Real Estate Corp. v. Century Life of
Am., 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
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When comparing marks, the test is not whether the marks can be distinguished
in a side-by-side comparison, but rather whether the marks are sufficiently similar
in terms of their overall commercial impression that confusion as to the source of the
services offered under the respective marks is likely to result. Midwestern Pet Foods,
Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed.
Cir. 2012). Further, marks “‘must be considered ... in light of the fallibility of memory
....’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014)
(quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683,
196 USPQ 1 (CCPA 1977)). The proper focus is on the recollection of the average
customer, who retains a general rather than specific impression of the marks.
Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Where both words and a design comprise the mark, the words are normally
accorded greater weight because the words are more likely to make an impression
upon purchasers, be remembered by them, and be used by them to request the
services. CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983) (“in
a composite mark comprising a design and words, the verbal portion of the mark is
the one most likely to indicate the origin of the goods to which it is affixed ”); In re
Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); Kabushiki Kaisha
Hattori Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985). See also Giant Food,
Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983).
There is nothing improper in stating that, for rational reasons, more or less weight
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has been given to a particular feature of a mark, such as a common dominant element,
provided the ultimate conclusion rests on a consideration of the marks in their
entireties. Viterra, 101 USPQ2d at 1908; In re Nat’l Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985).
In both Applicant’s and Registrant’s marks, the wording is the dominant portion,
and is accorded greater weight over the design elements. In Applicant’s mark, the
wave design serves as a decorative feature that sits below and highlights the wording,
and in Registrant’s mark the stylized human with a ribbon in the form of a wave
merely suggests that the medial services pertain to humans. Neither design element
is particularly memorable.
With regard to the wording in the marks, both marks have BLUEWATER as the
initial term, immediately followed by a generic term. As the initial and only non-
generic term in Applicant’s mark, and the initial and most prominent non-generic
term in in Registrant’s mark due to its size, “BLUEWATER” is the dominant source
indicator in both marks. See Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d
1895, 1897 (TTAB 1988) (noting that “it is often the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and remembered”); see also Palm
Bay Imps., 73 USPQ2d at 1692; Century 21 Real Estate 23 USPQ2d at 1700.
RADIOLOGY and MEDICINE – as generic terms - have been disclaimed. Merely
descriptive or generic disclaimed matter is typically less significant or less dominant
when comparing marks. See In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1534 (Fed. Cir. 1997); Nat’l Data, 224 USPQ at 751 (“That a particular feature is
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descriptive ... with respect to the relevant goods or services is one commonly accepted
rationale for giving less weight to a portion of the mark.”). The remaining terms in
Applicant’s mark - KENNETH W. PONDER, M.D., P.A. – comprise a business name
and appear in lettering which is smaller in size beneath BLUEWATER MEDICINE.
The presence of the name does not lessen likely confusion because consumers may
easily assume that Registrant’s services are an extension of Applicant’s services
provided under a related mark by a particular provider. See In re Riddle, 225 USPQ
630, 632 (TTAB 1985) (RICHARD PETTY'S ACCU TUNE for automotive service
centers confusingly similar to ACCUTUNE for automotive testing equipment;
rejecting applicant's argument that addition of RICHARD PETTY is sufficient to
avoid confusion.)
Applicant argues that BLUEWATER “is very weak” because it identifies the
geographic location of Registrant’s business, and is the weaker portion of the mark
which should be given less weight in the likelihood of confusion analysis.3 According
to Applicant, Registrant’s business is in Niceville, Florida, and “Bluewater Bay” is an
unincorporated residential and golf resort community located nearby.4 For support,
Applicant relies on:
● a Wikipedia page stating, “Bluewater Bay has grown into
one of the largest and most successful real estate
developments in Florida” and “[r]esidents are placed under
a Niceville mailing address”;5

3 Applicant’s Brief at p. 3 - 12, 7 TTABVUE 9 - 18.
4 Id. at p. 4, 7 TTABVUE 10.
5 August 6, 2019 Resp. to Office Action, TSDR 12-13.
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● a Westlaw search conducted on October 9, 2019, with the
search terms “bluewater” and “Niceville Florida” allegedly
showing that BLUEWATER is part of the name of 200
businesses;6 and
● seven business directory listings including the term
BLUEWATER located on addresses.com which have a
Niceville, Florida address (with an indication that there
are 44 search results for “Bluewater” as a “Business Name
or Keyword” in the Niceville, Florida area).7
In addition, Applicant relies on Registrant’s argument in prosecuting its
application that BLUEWATER is geographically descriptive in order to overcome a
refusal based on a registration for the mark BLUEWATER BAY ANIMAL
HOSPITAL. Registrant stated “the only commonality found in the marks is the
geographically descriptive term BLUEWATER.”8 Applicant maintains that
“Registrant itself made the argument that the term ‘bluewater’ is weak and that
differences in the other terms serve to distinguish the marks and prevent confusion.”9
We first address Applicant’s argument that BLUEWATER is weak because it is
geographically descriptive. Indeed, “[g]eographically descriptive terms are generally
regarded as inherently weak and entitled to less protection than arbitrary or
suggestive marks.” Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899
(TTAB 2006). We are not persuaded, however, that BLUEWATER identifies a
geographic location. Applicant acknowledges that “Bluewater Bay” is “an

6 October 14, 2019 Req. for Recon., TSDR 4-48.
7 August 6, 2019 Resp. to Office Action, TSDR 14-15.
8 October 14, 2019 Req. for Recon., 4 TTABVUE 51.
9 Applicant’s Brief at p. 5, 7 TTABVUE 11.
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unincorporated residential and golf resort community located between Niceville and
Destin in Okaloosa County, Florida.”10 The mailing address for (or geographic
location of) the Bluewater Resort and businesses including the name “Bluewater” is
Niceville, Florida. Applicant even states, “The Registrant’s business is located in
Niceville, Florida.”11 We find that the evidence in the record does not establish that
“Bluewater” identifies a geographic location.
Even if Bluewater were a geographic location, we are not persuaded that
Registrant's mark is so weak as to allow for the registration of Applicant’s mark.
While a geographic term may, under certain circumstances, be considered
nondistinctive, and therefore weak, “[a] mark that is registered on the Principal
Register is entitled to all Section 7(b) presumptions including the presumption that
the mark is distinctive ...” Id., 80 USPQ2d at 1889. This presumption is rebuttable,
but Applicant’s evidence does not rebut it particularly because there is insufficient
evidence to establish that Bluewater is a geographic location.
As for Registrant’s statement in its application that BLUEWATER is
geographically descriptive, that statement does not persuade us that we should find
the term to be geographically descriptive in the present application. No explanation
for that statement appears in Registrant’s Office Action response, and there is no
such thing as file wrapper estoppel in a trademark case. See Anthony's Pizza & Pasta
Int'l Inc. v. Anthony's Pizza Holding Co., 95 USPQ2d 1271, 1281 (TTAB 2009) (“The

10 August 6, 2019 Resp. to Office Action, TSDR 12.
11 Applicant’s Brief at p. 4, 7 TTABVUE 10.
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doctrine of ‘file wrapper estoppel’ does not apply in trademark cases.” ), aff'd, 415 Fed.
Appx. 222 (Fed. Cir. 2010) (citing Giant Food, Inc. v. Standard Terry Mills, Inc., 229
USPQ 955, 963 (TTAB 1986)). Cf. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d
1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (comments of opposing party in
prosecuting application support argument that mark is suggestive or descriptive ).
Further, Registrant’s mark is registered on the Principal Register without a
disclaimer of BLUEWATER; the USPTO did not find that the term BLUEWATER is
a geographically descriptive term despite Registrant’s statement.
Turning next to the westlaw.com and address.com search results, their
persuasiveness is limited. Specifically, there is no explanatory information on how
the databases obtained the results and what they represent, the search results do not
indicate whether the listings are for existing, active businesses, the services offered
by certain listed businesses cannot be determined from the limited information
provided, some listings appear to be duplicates,12 and some listings are in fields
unrelated to the services involved in this appeal. Additionally, from these search
results, we cannot determine the degree of consumer exposure, if any, to these
businesses. In any event, marks deemed “weak” or merely descriptive are still
entitled to protection under Section 2(d) against the registration by a subsequent user

12 Contrary to Applicant’s suggestion that the each result represents a separate business, the
search results appear to list all business profiles and filings meeting the search parameters,
and include multiple listings for the same businesses (e.g. entry nos. 173, 174 and 175 are for
the same entity).
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of a similar mark for closely related goods and/or services. See In re Max Capital Grp.
Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010).
We thus find that Applicant has not established any significant weakness in the
term “BLUEWATER,” and that the marks are similar in sound, meaning, and
commercial impression due to the shared term “BLUEWATER.” They also are similar
in appearance due to the inclusion of the term “BLUEWATER” as a prominent term
in both marks, with BLUEWATER being the first term that consumers will consider
when viewing the marks. The additional word elements contribute minimally to the
commercial impression of the marks by identifying the services provided or the trade
name of the owner of the mark, and the design elements do not change the overall
commercial impression.
The DuPont factor regarding the similarity of the marks therefore favors a finding
of likelihood of confusion.
IV. Purchasing Conditions/Purchaser Sophistication
Applicant argues that its services are sold to sophisticated and professional
purchasers, namely physicians and physician groups, are not only expensive, but are
highly specialized, requiring a good deal of knowledge and forethought on the part of
the referring physician, and such purchasers apply a higher standard of care based
upon their expertise and professional knowledge.13
Neither Applicant nor the Examining Attorney submitted any evidence regarding
the conditions under which sales are made or the degree of care that the consumers

13 Applicant’s Brief at 14, 7 TTABVUE 20.
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exercise when making their purchasing decisions. By virtue of the nature of the
services, however, we can conclude that purchasers of healthcare or medical services
exercise a heightened degree of care because of the specific purpose of the services,
the medical nature of the services, and the duty of care the purchasers have selecting
and using the services. Such purchasers include the referring medical professionals
as well as the patients themselves, who are members of the general adult population
who require medical assistance for themselves or persons they are responsible for
such as children.
We are mindful, however, where the purchasers consist of both professionals and
the public, the standard of care for purchasing the services is that of the least
sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222
(TTAB 2018) (citing Stone Lion Capital Partners, 110 USPQ2d at 1163). We are also
mindful that even if purchasers are sophisticated or knowledgeable in a particular
field, it does not necessarily mean that they are sophisticated or knowledgeable in
the field of trademarks or immune from source confusion. Id. at 1163-64.
The DuPont factor regarding purchasing conditions weighs slightly against a
finding of likelihood of confusion.
V. Conclusion
We have carefully considered all of the evidence and arguments of the Examining
Attorney and Applicant. The services are overlapping or otherwise related, the trade
channels and purchasers are the same and Applicant has not established any
significant weakness in the term BLUEWATER. Thus, although the purchasing
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conditions weigh slightly against a finding of likelihood of confusion, the other
DuPont factors weigh in favor of finding likelihood of confusion. We therefore
conclude that confusion is likely between Applicant’s mark for its services and
Registrant’s mark for its services.
Decision: The refusal to register under Section 2(d) is affirmed.