Hawaii Medical Service Association

Trademark Trial and Appeal Board

Sep 26, 2003

No. 76199156 (T.T.A.B. Sep. 26, 2003)

Mailed: September 26, 2003
Paper No. 12
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Hawaii Medical Service Association
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Serial No. 76/199,156
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Robert Carson Godbey and Chad M. Iida of Godbey Griffiths
Reiss for Hawaii Medical Service Association.
Tricia McDermott Thompkins, Trademark Examining Attorney,
Law Office 114 (K. Margaret Lee, Managing Attorney).
_______
Before Hairston, Walters and Drost, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Hawaii Medical
Service Association to register the mark CARDIAC CARE
CONNECTION for “providing cardiac information and an
illness management program aimed at reducing the long term
health effects and costs of cardiac problems through direct
patient and physician contact.”1
1 Serial No. 76/199,156, filed January 22, 2001, and asserting a
bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76/199,156
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C §1052(d), on the ground
that applicant’s mark, when applied to its services, so
resembles the mark CARDIAC CONNECTION, which is registered
for “educational services, namely, conducting seminars,
forums, screenings and health fairs in the field of
cardiology;” and “medical services,”2 as to be likely to
cause confusion, mistake or deception.
Applicant and the Examining Attorney have filed
briefs; an oral hearing was not requested.
Before turning to the issue of likelihood of
confusion, we must discuss an evidentiary matter. With its
appeal brief, applicant has submitted three exhibits.
Exhibit A consists of printouts taken from applicant’s home
page; Exhibit B is a list of proceedings in various federal
courts which involve parties whose names include the word
“Connection” taken from a private company’s database; and
Exhibit C is a list of third-party registrations of marks
that include the word “CONNECTION” taken from the Office’s
Trademark Electronic Search System (TESS). The Examining
Attorney has objected to this evidence as being untimely.
We agree. Trademark Rule 2.142(d) provides that the record
in the application should be complete prior to the filing
2 Registration No. 2,103,803 issued October October 7, 1997.
Ser No. 76/199,156
3
of an appeal. The Trademark Trial and Appeal Board will
ordinarily not consider additional evidence filed with the
Board by the applicant after the appeal is filed. After an
appeal is filed, if the applicant desires to introduce
additional evidence, the applicant may request the Board to
suspend the appeal and to remand the application for
further examination. Because applicant first submitted
this evidence with its appeal brief, it is untimely.
Applicant’s request, in its reply brief, that the Board
take judicial notice of this evidence is denied. The Board
does not take judicial notice of Internet printouts, lists
of third-party registrations or lists of court proceedings
from a private company’s database. See TBMP §712.01 and
cases cited therein.
In view of the foregoing, we have not considered the
evidence in reaching our decision herein.
This brings us to the issue of likelihood of
confusion. In determining whether there is a likelihood of
confusion between two marks, we must consider all relevant
factors as set forth in In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis under Section 2(d), two of
the most important considerations are the similarities or
dissimilarities between the marks and the similarities or
Ser No. 76/199,156
4
dissimilarities between the services. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976).
Applicant argues that the services are different
because registrant’s services are informational in nature
and are aimed at a general audience whereas “[applicant’s]
services are [designed] to diagnose and treat specific
cardiology problems unique to a particular patient.”
(Brief, p. 12).
The question of likelihood of confusion must be
determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
services recited in the registration. See In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997); and Canadian Imperial Bank v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).
Further, it is a general rule that goods and/or
services need not be identical or even competitive in order
to support a finding of likelihood of confusion. Rather,
it is enough that the goods and/or services are related in
some manner that would give rise, because of the marks used
therewith, to a mistaken belief that they originate from or
are in some way associated with the same producer or that
there is an association between the producers of the goods
Ser No. 76/199,156
5
and/or services. In re Melville Corp., 18 USPQ2d 1386
(TTAB 1991), and cases cited therein.
Registrant’s services are identified as “educational
services, namely, conducting seminars, forums, screenings
and health fairs in the field of cardiology” and “medical
services.” Applicant’s services are identified as
“providing cardiac information and an illness management
program aimed at reducing the long term health effects and
costs of cardiac problems through direct patient and
physician contact.”
We agree with the Examining Attorney that, based on
the recitations of services, registrant’s medical services
and educational services in the field of cardiology are
identical and otherwise closely related to applicant’s
services of providing cardiac information and an illness
management program for persons with cardiac problems.
Because registrant’s recitation of services contains no
limitations we must presume that it encompasses all types
of medical services, including an illness management
program for persons with cardiac problems. Thus,
applicant’s and registrant’s services in this regard are
legally identical. Further, registrant’s educational
services in the field of cardiology and applicant’s
services of providing cardiac information are closely
Ser No. 76/199,156
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related in that both involve teaching or advising persons
about cardiac problems. Although we recognize that
applicant’s services will be directed to specific patients,
a patient of applicant could nonetheless avail him or
herself of registrant’s educational services. In sum, the
class of purchasers of applicant’s and registrant’s
involved services would be the same.
We turn next to a consideration of the marks at issue.
Applicant asks us to give little weight to the fact that
both marks involved herein include the words CARDIAC and
CONNECTION, and to focus on the additional word CARE in its
mark to reach a conclusion that the marks are not likely to
cause confusion. In addition, applicant asserts that
registrant’s mark CARDIAC CONNECTION is weak and entitled
to only a limited scope of protection.
Because both of the involved marks include the words
CARDIAC and CONNECTION in that order, there are significant
similarities in sound, appearance, connotation and thus
overall commercial impression. Applicant’s mere addition
of the word CARE does not serve to distinguish the marks so
as to avoid a likelihood of confusion. Although there may
be subtle differences in the meanings of the marks when
they are subjected to a close analysis, we do not believe
that purchasers will undertake such an analysis.
Ser No. 76/199,156
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The test for likelihood of confusion 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
impression that confusion as to the source of the services
offered under the respective marks is 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).
Even if we were to assume that purchasers did note the
slight difference in the marks because of the word CARE in
applicant’s mark, in view of the strong similarities
stemming from the identical words CARDIAC and CONNECTION,
and in view of the fact that the marks are used on
identical and closely related services, purchasers are
likely to believe that they are variants of each other and
that they identify services emanating from the same source.
With regard to applicant’s contention that
registrant’s mark is weak and entitled to a limited scope
of protection, there is no evidence before us to support
this contention. Nonetheless, we recognize that
registrant’s mark CARDIAC CONNECTION is somewhat suggestive
of registrant’s services. This fact, however, does not
Ser No. 76/199,156
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help distinguish CARDIAC CONNECTION and CARDIAC CARE
CONNECTION because the marks convey the same suggestive
significance, that of a link to cardiac-related services.
Finally, applicant argues that the purchasers of its
services and registrant’s services are discriminating
consumers in this regard, and that therefore they would not
be confused just because these marks share the same two
words. Even if prospective customers were discriminating
purchasers, these marks, considered in their entireties,
are similar enough to lead purchasers of the involved
services to assume, erroneously, that the same entity
provides, is responsible for, or in some way sponsors, the
services rendered under both marks. This is especially so
because these kinds of services are frequently sought at
the recommendations of doctors or friends who may make oral
reference to the mark under which the services are
provided. Under such circumstances, a less than perfect
recollection of the registered mark is more likely, and the
likelihood of confusion based on the aforementioned
similarities is thereby increased.
We conclude that persons familiar with the registered
mark CARDIAC CONNECTION for educational services in the
field of cardiology and medical services would be likely to
believe, upon encountering the substantially similar mark
Ser No. 76/199,156
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CARDIAC CARE CONNECTION for the services of providing
cardiac information and an illness management program for
persons with cardiac problems, that such services emanate
from or are associated with the same source.
Decision: The refusal to register under Section 2(d)
is affirmed.