Karen L. Giblin

Trademark Trial and Appeal Board

Jan 13, 2000

No. 74732385 (T.T.A.B. Jan. 13, 2000)

Paper No. 14
EWH/MM
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 1/13/00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Karen L. Giblin
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Serial No. 74/732,385
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Evelyn M. Sommer for Karen L. Giblin.
Sandy Switzer, Trademark Examining Attorney, Law Office 112
(Janice Olear, Managing Attorney).
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Before Simms, Hanak and Quinn, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Karen L. Giblin (applicant) seeks to register PRIME
PLUS for “educational services, namely, providing
workshops, lectures, conferences and classes on the subject
of menopause, directed to menopausal women.” The intent-
to-use application was filed on September 21, 1995.
The Examining Attorney refused registration on the
basis that applicant’s mark, as used in connection with
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applicant’s services, is likely to cause confusion with the
mark PRIME REHAB, previously registered for “educational
services, namely conducting classes, seminars, conferences,
individual sessions and workshops in the field of
psychology and medicine covering physical and psychological
recovery from injury and other medical problems for medical
professionals and patients and distributing course
materials in connection therewith.” Registration number
1,985,491.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request a
hearing.
In any likelihood of confusion analysis, two key
considerations are the similarities of the goods or
services and the similarities of the marks. 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.”).
Considering first the services, it is the position of
the Examining Attorney that the services of applicant and
registrant are related “because both are educational
Ser No. 74/732,385
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services related to health issues” and because the NEXIS
“evidence of record shows that hospitals and other
facilities offer both medical rehabilitation services and
educational services in the areas of medical rehabilitation
and women’s health issues, including menopause.”
(Examining Attorney’s brief page 4). Obviously, both
applicant’s services and registrant’s services are
educational services which are related to health issues.
Applicant does not contend otherwise. Moreover, applicant
further concedes that the services described in the cited
registration would be offered by hospitals and that, at a
minimum, applicant’s services could be “provided at or even
sponsored by a hospital.” (Applicant’s brief page 7).
Accordingly, we find that there is a relationship
between registrant’s and applicant’s services such that the
use of similar marks for both types of services would
result in a likelihood of confusion.
Turning to a consideration of the marks, we find that
the only common element is the highly laudatory word
“prime.” The word “prime” is defined as meaning “first in
quality; of the highest excellence; first-rate.” Webster’s
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New World Dictionary (2d ed. 1970). It is has been
repeatedly held that highly laudatory words are
descriptive. See 1 J. McCarthy, McCarthy on Trademarks and
Unfair Competition Section 11:17 at pages 11-21 to 11-22
(4th ed. 1999). In addition, it is further been held that
if the only word common to two marks is descriptive or even
highly suggestive, a likelihood of confusion is rarely
found. See In re Bed & Breakfast Registry, 791 F.2d 157,
229 USPQ 818 (Fed. Cir. 1996) and Tektronix, Inc. v.
Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694 (CCPA
1976).
Other than sharing the highly laudatory, suggestive
word “prime,” applicant’s mark is otherwise totally
dissimilar from registrant’s mark. The PLUS portion of
applicant’s mark is quite dissimilar from the REHAB portion
of registrant’s mark in terms of visual appearance,
pronunciation and meaning.
Accordingly, despite the fact that applicant’s
services are related to registrant’s services, we find that
when considered in their entireties, the two marks are
dissimilar enough such that there is simply no
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likelihood of confusion.
Decision: The refusal to register is reversed.
R. L. Simms
E. W. Hanak
T. J. Quinn
Administrative Trademark
Judges, Trademark Trial and
Appeal Board