Jamil, et al.

Trademark Trial and Appeal Board

Feb 17, 2005

No. 76032587 (T.T.A.B. Feb. 17, 2005)

Mailed: February 17, 2005
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Jamil, et al
________

Serial No. 76032587
_______

Dr. Basharat A. Jamil, pro se, for Jamil, et al.

Amy L. Alfieri, Trademark Examining Attorney, Law Office 109
(Howell, Managing Attorney).
_______

Before Seeherman, Quinn and Hohein, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Basharat A. Jamil, Irfan Jamil, Furhan A. Jamil and
Usman A. Jamil, all of whom are United States citizens and who
will hereinafter be collectively referred to in the singular as
"applicant," have filed an application to register on the
Principal Register the mark "MCHEALTH CLINIC" and design, as
reproduced below,

for "healthcare services, namely, preventative, alternative, and
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76032587
2
conventional healthcare."1
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 the services recited in the
application, so resembles the following marks, which are
registered by the same registrant for the various services
indicated, as to be likely to cause confusion, mistake or
deception:2
(i) the mark "RONALD MCDONALD HOUSE,"
which is registered for a "newsletter dealing
with a housing program for families with
hospitalized children" and for "providing
temporary lodging and emotional support for
families with hospitalized children";3

(ii) the mark "RONALD MCDONALD HOUSE"
and design, as reproduced below,

1
Ser. No. 76032587, filed on April 24, 2000, which is based on an
allegation of a bona fide intention to use the mark in commerce. The
word "CLINIC" is disclaimed and, as further stated in the application:

The mark consists of the wording, "MCHEALTH CLINIC"
with a stylized representation of a stethoscope forming the
letter M. The letter M and the term CLINIC will appear in
red and the lowercase letter "C," the term "HEALTH," and
the stethoscope design will appear in blue.

2 While the final refusal was also based on Reg. No. 1,794,979, which
issued on September 28, 1993 for the mark "MCFIT" for "newsletters
related to health and fitness programs," such registration has now
expired. Accordingly, no further consideration will be given thereto.

3 Reg. No. 1,201,031, issued on July 13, 1982, which sets forth a date
of first use of the mark anywhere and in commerce of, respectively,
March 1979 for the goods and October 15, 1974 for the services;
renewed. The word "HOUSE" is disclaimed.

Ser. No. 76032587
3
which is registered for "providing temporary
lodging and emotional support for families
with hospitalized children";4

(iii) the mark "RONALD MCDONALD HOUSE"
and design, as illustrated below,

which is registered for "providing temporary
lodging and emotional support for families
with hospitalized children";5

(iv) the mark "RONALD MCDONALD HOUSE
FAMILY ROOM" and design, as depicted below,

which is registered for "providing
hospitality rooms within hospitals for
families with hospitalized children";6 and

(v) the mark "RONALD MCDONALD HOUSE
FAMILY ROOM," which is registered for
"providing hospitality rooms within

4 Reg. No. 1,337,332, issued on May 21, 1985, which sets forth a date
of first use of the mark anywhere of January 1981 and a date of first
use of the mark in commerce of February 1981; combined affidavit §§8
and 15. The word "HOUSE" is disclaimed.

5 Reg. No. 1,927,933, issued on October 17, 1995, which sets forth a
date of first of the mark anywhere and in commerce of February 1994;
combined affidavit §§8 and 15. The word "HOUSE" is disclaimed.

6 Reg. No. 2,381,540, issued on August 29, 2000, which sets forth a
date of first of the mark anywhere and in commerce of March 11, 1992.
The word "HOUSE" is disclaimed.

Ser. No. 76032587
4
hospitals for families with hospitalized
children."7

Applicant has appealed. Briefs have been filed, but an
oral hearing was not held. We reverse the refusal to register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity or
dissimilarity in the goods and/or services at issue and the
similarity or dissimilarity of the respective marks in their
entireties.8
Turning first to the similarity or dissimilarity in the
goods and services at issue, Examining Attorney properly notes in
her brief that it is well established that an applicant's
services and those goods and/or services of the registrant need
not be identical or even competitive in nature in order to
support a finding of likelihood of confusion. Instead, it is
sufficient that the respective goods and/or services are related
in some manner and/or that the circumstances surrounding their

7 Reg. No. 2,377,753, issued on October 26, 1999, which sets forth a
date of first of the mark anywhere and in commerce of March 11, 1992.
The word "HOUSE" is disclaimed.

8 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [or services] and differences
in the marks."
Ser. No. 76032587
5
marketing are such that they would be likely to be encountered by
the same persons under situations that would give rise, because
of the marks employed in connection therewith, to the mistaken
belief that they originate from or are in some way associated
with the same producer or provider. See, e.g., Monsanto Co. v.
Enviro-Chem Corp., 199 USPQ 590, 595-96 (TTAB 1978) and In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978). The Examining Attorney, while making no mention of
registrant's newsletter, maintains in view of the above that
"applicant provides services that are related to the registrant's
provision of healthcare services" because registrant "has created
a physical presence within hospitals by providing hospitality
rooms" and has furnished "assistance to the families of
hospitalized children by providing temporary lodging and
emotional support." Registrant's services, the Examining
Attorney insists, are "sufficiently related to the health care
field so that confusion between the applicant's mark and the
registered marks would be likely."
Applicant, on the other hand, contends that healthcare
consumers would not regard the provision by applicant of the
services of "preventative, alternative, and conventional
healthcare" as being commercially or otherwise "sufficiently
related to" the provision by registrant of either such services
as "temporary lodging and emotional support for families with
hospitalized children" or "hospitality rooms within hospitals for
families with hospitalized children." In particular, applicant
argues in its reply brief that because "the scope of the
Ser. No. 76032587
6
registered marks is 'housing' and '[hospitality rooms]'" while
"the scope of the Applicants [sic] mark ... is medical care
[offered] through health clinics, ... they are diametrically
opposite" services which the general public is simply not likely,
at least on this limited record, to consider as being related.
It is nonetheless obvious that, as identified, each of
the respective services is directed in a broad sense to some
aspect of the field of healthcare, with applicant providing
"preventative, alternative, and conventional healthcare" through
venues that could include medical clinics or even hospitals and
registrant providing, for families of hospitalized children,
temporary lodging and emotional support as well as hospitality
rooms within hospitals. More importantly, however, the
respective services would appear on their face to be
complementary in that the families of children in need of
clinical or hospital care not infrequently require temporary
lodging and emotional support, as well as hospitality rooms
within a hospital, in order to be able to stay with their
children during the provision of medical treatment. Furthermore,
such families would consequently find a newsletter dealing with a
housing program for families with hospitalized children to be of
interest concerning details of and developments in temporary
lodging which is conveniently located to a hospital or medical
clinic needed by their children. Accordingly, we agree with the
Examining Attorney that the healthcare services which applicant
intends to provide through its medical clinic or could provide in
a hospital are "sufficiently related to" registrant's newsletter
Ser. No. 76032587
7
dealing with a housing program for families with hospitalized
children and its services of providing temporary lodging and
emotional support, as well as in-hospital hospitality rooms, for
families of child patients that, if offered under the same or
substantially similar marks, confusion as to the origin or
affiliation thereof would be likely to occur.
Turning, then, to consideration of the marks at issue
herein, the Examining Attorney asserts in her brief that:
The applicant's mark is ... likely to be
confused with the [registrant's] marks[,] ...
all of which contain the wording, RONALD
MCDONALD. The owner of these marks,
McDonald's Corporation, has established a
famous family of marks containing the prefix
"MC." The Trademark Trial and Appeal Board
has recognized the fame of these marks as
well as the establishment of a family of
marks by McDonald's Corporation. In the case
of McDonald's Corp. v. McClain, 37 USPQ2d
1274 (TTAB 1995), the ... Board held that the
applicant's MCCLAIM mark for "legal services"
so resembled the McDonald's family of marks
that confusion was likely, as many of the
latter marks combine the distinctive MC
prefix with suggestive or descriptive terms,
and the term CLAIM is descriptive or
suggestive when used in connection with legal
services. Additionally, in the case of
McDonald's Corp. v. McKinley, 13 USPQ2d 1895
(TTAB 1989), the ... Board held that the
applicant's MCTEDDY mark, when used in
connection with teddy bears, was likely to
cause confusion as to source in light of the
well-known MC and MAC family of marks owned
by McDonald's Corporation.

As evidenced by the decisions of the ...
Board, the McDonald's Corporation is widely
known by consumers for its use of the prefix
"MC" in conjunction with a wide variety of
goods and services. Thus, the examining
attorney maintains that consumers are likely
to believe that MCHEALTH CLINIC is associated
with the cited marks containing the wording
... RONALD MCDONALD HOUSE, and originates
Ser. No. 76032587
8
from the same source, namely, McDonald's
Corporation.

Applicant, observing in its initial brief that the
"driving force and controlling factor" behind the refusal to
register "seem to be the 'fame'" of the cited marks "and the size
of" the registrant, insists that "[t]he fame and the size of a
corporation should have no role in the USPTO decision" concerning
whether confusion is likely. However, as set forth in du Pont,
supra, "[t]he fame of the prior mark (sales, advertising, length
of use)" is a factor to be considered "[i]n testing for
likelihood of confusion ... when [evidence thereof is] of
record." In particular, the Examining Attorney correctly points
out in her brief that:
Famous marks enjoy a wide latitude of legal
protection because they are more likely to be
remembered and associated in the public mind
then [sic] a weaker mark. Recot, Inc. v.
M.C. Becton, 214 F.3d 1322, 1327, 54 USPQ2d
1894, 1987 [sic] (Fed. Cir. 2000) (Trademark
Trial and Appeal Board erred in limiting the
weight accorded to the fame of opposer's
FRITO-LAY mark); Kenner Parker Toys Inc. v.
Rose Art Industries, Inc., 963 F.2d 350, 352,
22 USPQ2d 1453, 1456 (Fed. Cir. 1992) (Board
erred in discounting the fame of opposer's
mark PLAY-DOH). When present, the fame of
the mark is "a dominant factor in the
likelihood of confusion analysis for a famous
mark, independent of the consideration of the
relatedness of the goods [or services]."
Recot, Inc. v. M.C. Becton, 214 F.3d 1322,
1327, 54 USPQ2d 1894, 1898.

Nevertheless, the rights conferred by a famous mark, in
legal contemplation, are not the same as a right in gross, which
would preclude the registration to another of the same or similar
mark(s) for any goods and services. For instance, even though
famous marks, as noted above, are entitled to a wide latitude of
Ser. No. 76032587
9
legal protection, our principal reviewing court in Electronic
Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d
713, 21 USPQ2d 1388, 1392 (Fed. Cir. 1992), underscored in its
reversal of the Board's finding of a likelihood of confusion that
"the Board gave too much weight to certain DuPont factors, such
as the strength of opposer's mark, and failed to give due weight
to countervailing DuPont factors, such as the sophistication of
purchasers." As set forth in du Pont, supra, "[t]he evidentiary
elements are not listed ... in order of merit" inasmuch as
"[e]ach may from case to case play a dominant role."
In this case, however, there simply is no evidence
which is properly of record which currently establishes the fame
of any marks owned by registrant, including an asserted family of
"MC"-prefixed marks, much less any evidence showing that marks
which include the name "RONALD MCDONALD" or the phrase "RONALD
MCDONALD HOUSE" presently are famous. The Examining Attorney's
reliance on certain factual finding by the Board in McDonald's
Corp. v. McClain, supra, and McDonald's Corp. v. McKinley, supra,
to support her contention regarding the existence at the present
time of a "famous family of marks containing the prefix 'MC'" is
misplaced for several reasons. Not only are such cases, which
were respectively decided on May 23, 1995 and September 25, 1989,
now over nine and 14 years old, but even if they issued on the
same date as this opinion, the findings of fact and conclusions
of law stated therein do not constitute evidence which is binding
on either applicant or the Board in this proceeding. See, e.g.,
Faultless Starch Co. v. Sales Producers Associates, Inc., 530
Ser. No. 76032587
10
F.2d 1400, 189 USPQ 141, 142-43 (CCPA 1976) [because ultimate
conclusion regarding likelihood of confusion is necessarily drawn
from all probative facts in evidence in each individual case,
such conclusion, as distinguished from general rules of law or
interpretation, cannot be controlled by earlier conclusions
reached in another case]; and National Dairy Products Corp. v.
Parman-Kendall Corp., 122 USPQ 332, 333 (TTAB 1959) ["facts found
by a court and the conclusions drawn therefrom in a case
involving another party are not binding on this applicant or
controlling on this tribunal"].9
Because there is no proof that the cited marks are part
of a famous family of registrant's marks, we must decide the
issue of likelihood of confusion on the basis of each of the
cited marks individually. When such marks and applicant's mark
are considered in their entireties, we find that applicant's
"MCHEALTH CLINIC" and design mark is substantially different in
sound, appearance, connotation and commercial impression from
registrant's "RONALD MCDONALD HOUSE" and "RONALD MCDONALD HOUSE

9 This is not to say, of course, that the Board is totally unaware of
registrant and its fast-food products and restaurant services.
Rather, like applicant, this panel is certainly familiar with such.
Applicant, we note, has essentially admitted that registrant is very
well known if not famous for its fast-food operations inasmuch as
applicant, in its reply brief, makes the statement that "McDonald's
Corporation should rest assured that nobody will show up in a McHealth
Clinic to buy a bigmac and[,] vice versa, nobody will go to McDonald's
Restaurant to have a blood test!" In the context of this appeal,
however, one of the issues before us is whether there is evidence
which proves that marks which contain the "MC"-prefix, or which
consist of or include the name "RONALD MCDONALD" or the phrase "RONALD
MCDONALD HOUSE," form a famous family of marks for such services as
providing temporary lodging and emotional support, as well as
hospitality rooms within hospitals, for families with hospitalized
children and such ancillary goods as newsletters dealing with a
housing program for families with hospitalized children.

Ser. No. 76032587
11
FAMILY ROOM" marks. Applicant, in this regard, reiterates in its
reply brief the argument which it made in its initial brief,
emphasizing in particular that:10
A comparison of the designs of [registrant's]
... marks with the Applicants [sic] mark
indicates that there is no similarity between
the designs due to the fact that the heart-
shaped stethoscope M in the design of the
Applicants [sic] mark is clearly distinct
from the M used in the registered designs.
The color scheme of the Applicant['s] design,
[with] M and Clinic [in] red and rest [in]
blue on white base (red, white and blue),
will most likely leave the impression and
image of M-Clinic in the eyes of the viewers,
thus leaving no confusion between the sound,
connotation and commercial impression of the
Applicants [sic] design and the registered
designs.

On the other hand, the Examining Attorney in her brief
"maintains that it is the prefix, "MC," not the design element,
which will be remembered most by consumers," noting that:
When a mark consists of a word portion and a
design portion, the word portion is more
likely to be impressed upon a purchaser's
memory and to be used in calling for the
goods or services. Therefore, the word
portion is controlling in determining
likelihood of confusion. In re Dakin's
Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB

10 Applicant also repeats in its reply brief a contention which it
raised throughout the prosecution of its application. Specifically,
referring to an article which reports that, on or about November 27,
2001, "Judge David Neuberger" of "London's High Court ... ruled that a
Chinese restaurant owner can use the name McChina for his chain of
fast-food outlets despite protests from hamburger giant McDonald's,"
applicant urges that, in light of such ruling, it is clearly entitled
to a finding of no likelihood of confusion because not only is its
mark different from registrant's marks, but its services are even more
different from registrant's goods and services than the fast-food
restaurant services at issue in the English court's ruling. The fact
that the Examining Attorney, as applicant further points out, "has
failed to address or refute the latest Court decision by Judge
Neuberger" is of no moment, however, inasmuch as such a decision from
a foreign court, interpreting a different statutory framework, is
irrelevant in this appeal.

Ser. No. 76032587
12
1999); In re Appetito Provisions Co. [Inc.],
3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v.
Amerco, Inc., 192 USPQ 729 (TTAB 1976); TMEP
§1207.01(c)(ii).

It is plain, however, that the word portions of the respective
marks are comprised of, and distinguished by, more than just the
prefix "MC." Clearly, in terms of overall sound, appearance,
connotation and commercial impression, the word portion of
applicant's "MCHEALTH CLINIC" and design mark is substantially
different from the word portions of registrant's "RONALD MCDONALD
HOUSE" marks and its "RONALD MCDONALD HOUSE FAMILY ROOM" marks.
Even allowing for the descriptiveness, as evidenced by the
disclaimers thereof, of the words "CLINIC" and "HOUSE," it
obviously remains the case that the suggestive term "MCHEALTH" in
applicant's mark bears essentially no resemblance to the name
"RONALD MCDONALD" in registrant's marks.11 We therefore agree
with applicant that, on this record, contemporaneous use of the
marks at issue is not likely to cause confusion as to source or
sponsorship, notwithstanding the complementary nature of the
respective goods and services.12
Decision: The refusal under Section 2(d) is reversed.

11 It is pointed out that, in articulating reasons for reaching a
conclusion on the issue of likelihood of confusion, our principal
reviewing court has indicated that "there is nothing improper in
stating that, for rational reasons, more or less weight has been given
to a particular feature of a mark, provided [that] the ultimate
conclusion rests on consideration of the marks in their entireties."
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985). For instance, according to the court, "that a particular
feature is descriptive ... with respect to the involved goods or
services is one commonly accepted rationale for giving less weight to
a portion of a mark ...." Id.

12 We hasten to add, however, that a different result might pertain in
a proceeding (such as an opposition) in which evidence that registrant
possesses a famous family of "MC"-prefixed marks is made of record.