MedAmerica, Inc.v.Med Staff America, Inc.

Trademark Trial and Appeal Board

Feb 12, 2009

No. 91164205 (T.T.A.B. Feb. 12, 2009)

Mailed
12 February 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

MedAmerica, Inc.
v.
Med Staff America, Inc.
_____

Opposition No. 91164205
To application No. 76506549
_____

Darl R. Danford of Circuit, McKellogg, Kinney & Ross LLP for
MedAmerica, Inc.

Daniel C. Hunter, IV of Ostergar Hunter Law Group for Med
Staff America, Inc.1
______

Before Drost, Walsh, and Wellington, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On April 14, 2003, Med Staff America, Inc. (applicant)
applied to register the following mark:

1 Applicant did not file a brief in this case.
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91164205
2
For “employment hiring, recruiting, placement, staffing and
career networking services” in Class 35. The application
contains a disclaimer of the terms “Med Staff America” and
“Physician Search & Consulting Firm.”2
On February 4, 2005, MedAmerica, Inc. (opposer) filed
an opposition to the registration of applicant’s mark.
Opposer claimed ownership of a registration for the mark
MEDAMERICA in typed or standard character form for “business
management consultant services in the medical field” in
Class 35.3 Subsequently, opposer introduced into evidence
its ownership of another registration for MEDAMERICA in
standard character form for “management services in the
medical field” in Class 35.4
Opposer alleges that “Applicant’s mark so resembles
Opposer’s mark as to be likely, when used on or in
connection with the services of Applicant, to cause
confusion, or to cause mistake, or to deceive with resulting
damage to Opposer.” Notice of opposition at 4. Applicant

2 Serial No. 76506549. The application contains an allegation of
a date of first use anywhere of November 13, 2002, and a date of
first use in commerce of December 6, 2002.
3 Registration No. 1120153, issued June 12, 1979, renewed.
4 Registration No. 3217903, issued March 13, 2007. Inasmuch as
applicant has not objected to this registration, we hold that the
issue of likelihood of confusion with this registration was tried
by implied consent. Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d
1187, 1193 n.7 (TTAB 2007) (“[A]pplicant has not objected to
opposer’s reliance on the three unpleaded registrations.
Accordingly, we treat these unpleaded registrations as having
been tried by implied consent of the parties”).
Opposition No. 91164205
3
has denied the salient allegations in the notice of
opposition.
The Record
The record consists of the pleadings in this
opposition; the application file; the stipulated
declarations in lieu of testimony of Michael Harrington,
opposer’s chief executive officer and Wiley Osborne,
applicant’s chief executive officer, both with exhibits; and
opposer’s and applicant’s notices of reliance on discovery
responses.
Priority
Priority and standing are not an issue in the
opposition proceeding because opposer is relying on its
registrations for the mark MEDAMERICA. See King Candy Co.
v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974).
Likelihood of Confusion
The main issue in this case is whether there is a
likelihood of confusion. In these cases, we analyze the
facts as they relate to the relevant factors set out in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973). See also In re Majestic Distilling
Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003)
and Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894,
1896 (Fed. Cir. 2000).
Opposition No. 91164205
4
Here, opposer’s marks are for the term MEDAMERICA and
applicant’s mark consists of the words MED STAFF AMERICA THE
PHYSICIAN SEARCH & CONSULTING FIRM and crosses design. We
now must examine the marks to determine their similarity or
dissimilarity in their entireties as to appearance, sound,
connotation and commercial impression. Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). Opposer’s
marks are in typed or standard character form so we must
assume that they can be displayed in the same stylization as
applicant’s mark. Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000) (“Registrations
with typed drawings are not limited to any particular
rendition of the mark and, in particular, are not limited to
the mark as it is used in commerce”) and In re Cox
Enterprises Inc., 82 USPQ2d 1040, 1044 (TTAB 2007)(“We must
also consider that [a] mark, presented in typed or standard
character form, is not limited to any special form or style
as displayed on its goods”). The term MEDAMERICA is the
only part of opposer’s mark and the term MED STAFF AMERICA
is the dominant part of applicant’s mark. MED STAFF AMERICA
is in larger, bolder letters than the other wording in
applicant’s mark and it corresponds with applicant’s
corporate name. It is likely to be the way prospective
purchasers would refer to applicant’s services. The design,
Opposition No. 91164205
5
consisting of two crosses, would not likely be that
memorable for medical related services. In re Appetito
Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987) (“Thus, if
one of the marks comprises both a word and a design, then
the word is normally accorded greater weight because it
would be used by purchasers to request the goods or
services”).
Applicant’s mark contains opposer’s entire mark with
the mark separated by applicant’s addition of the
descriptive term Staff (applicant’s services include
“staffing” services).5 While applicant has also disclaimed
all the wording in its mark, this action does not remove the
disclaimed matter from consideration in our likelihood of
confusion analysis. The Federal Circuit has previously
addressed this issue. “Shell argues that the words are
common dictionary words, and that since Shell filed a
disclaimer of the words ‘Right-A-Way’, the only issue of
registration relates to the script and the arrow design.
The Board correctly held that the filing of a disclaimer

5 Opposer argues that “the word ‘staff’ is merely descriptive”
and that “applicant’s mark should be considered as if the word
‘STAFF’ is not present. This is not correct. M2 Software Inc.
v. M2 Communications Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1948-49
(Fed. Cir. 2006) (“When comparing the similarity of marks, a
disclaimed term, here ‘COMMUNICATIONS,’ may be given little
weight, but it may not be ignored”). Furthermore, opposer does
not explain why we should, at the same time, ignore the
disclaimed word “Staff” and rely on the disclaimed words “Med”
and “America” to find the marks similar.
Opposition No. 91164205
6
with the Patent and Trademark Office does not remove the
disclaimed matter from the purview of determination of
likelihood of confusion.” In re Shell Oil Co., 26 USPQ2d
1687, 26 USPQ2d 1687, 1688-89 (Fed. Cir. 1993). See also In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985) (“The technicality of a disclaimer in
National’s application to register its mark has no legal
effect on the issue of likelihood of confusion”).
We also take into consideration that both applicant’s
and opposer’s services include services in the medical field
so that the term “Med” is hardly an arbitrary term and also
that the term “America” has geographic significance.
Nonetheless, we are required to view the marks MEDAMERICA
(or MedAmerica) and

in their entireties. When we do, we find that the presence
of the terms “MED” and “AMERICA” in both marks leads us to
conclude that the marks are more similar than different.
National Data, 224 USPQ at 751 (“[T]here is nothing improper
in stating that, for rational reasons, more or less weight
has been given to a particular feature of a mark, provided
the ultimate conclusion rests on consideration of the marks
Opposition No. 91164205
7
in their entireties. Indeed, this type of analysis appears
to be unavoidable”). The dominant part of applicant’s mark
is very similar in sound, appearance, connotation and
commercial impression with opposer’s mark. The only
difference is the addition of the highly descriptive word
“staff,” which would simply identify an aspect of the
services that both applicant and opposer provide.
Applicant’s other wording, “The Physician Research &
Consulting Firm,” is visually subordinate and informational
in nature. Indeed, the fact that it includes the term
“consulting firm” would suggest a connection with, rather
than distinguish it from, opposer’s “management consultant
services.” Both services are likely to be referred to as
MED AMERICA and MED STAFF AMERICA, and the cross design in
applicant’s mark is unlikely to be used to distinguish the
parties’ medical-related services.6 See In re Chatam
International Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946
(Fed. Cir. 2004) (“With respect to JOSE, the Board correctly
observed that the term simply reinforces the impression that

6 Opposer argues that applicant “seeks to disclaim all of the
words in its mark. The application can be refused on that basis
alone.” Brief at 11. Applicant did not plead this as a ground
in its notice of opposition and it has not been tried by implied
consent. We add that this would not constitute a basis to refuse
registration because the application includes an inherently
distinctive design. In re Clutter Control Inc., 231 USPQ 588,
589 (TTAB 1986) (“When words which are merely descriptive, and
hence unregistrable, are presented in a distinctive design, the
design may render the mark as a whole registrable, provided that
the words are disclaimed”).
Opposition No. 91164205
8
GASPAR is an individual’s name. Thus, in accord with
considerable case law, the JOSE term does not
alter the commercial impression of the mark.” The marks
JOSE GASPAR GOLD and GASPAR’S ALE were determined to be
similar) and In re Dixie Restaurants, Inc., 105 F.3d 1405,
41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (Federal Circuit held
that, despite the addition of the words “The” and “Cafe” and
a diamond-shaped design to registrant’s DELTA mark, there
was a likelihood of confusion).
Even though the marks are similar, it is now important
to compare the services to see if they are related.
Applicant’s services are employment hiring, recruiting,
placement, staffing and career networking services.
Opposer’s services are broadly identified as business
management consultant services in the medical field.7 We
must consider the services as they are identified in the
recitation of services. Octocom Systems, Inc. v. Houston
Computers Services 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 set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods, the

7 Opposer’s ‘903 registration omits the terms “business” and
“consultant” from its identification of services.
Opposition No. 91164205
9
particular channels of trade or the class of purchasers to
which the sales of goods are directed”). Opposer’s
management consultant services encompass consultant services
in the area of hiring, recruiting, placement and staffing.
Furthermore, in order to be related, goods or services
do not have to overlap. It “has often been said that goods
or services need not be identical or even competitive in
order to support a finding of likelihood of confusion.
Rather, it is enough that goods or services are related in
some manner or that circumstances surrounding their
marketing are such that they would be likely to be seen by
the same persons under circumstances which could give rise,
because of the marks used thereon, 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 each [party’s] goods or services.” In re
Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). See also
Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661
(TTAB 2002).
Specifically, opposer argues that “both the Applicant
and the Opposer provide consulting services for hospitals
and medical groups that involve medical staffing.” Brief at
12. Its witness testified that its “business is to provide
physician, physician assistant, and related health care
Opposition No. 91164205
10
position recruiting and credentialing services for medical
groups.” Harrington declaration at 2. On its website, one
of its customer describes opposer as helping in “all aspect
of our business and personnel management.”
www.medamerica.com. See also Id. (MedAmerica’s hospitalist
medical group “utilizes a democratic ownership model to
recruit and train high quality hospitalist physicians”).
Another of its website pages refers to its “People
Management” services, which are described as:
In a service-oriented field such as healthcare, your
employees are your most valuable resources. If your
group is unable to function cohesively as a team,
everyone suffers – your patients, your staff, and your
medical site as a whole. MedAmerica can help you build
your “dream team” through employee training programs
and new hire recruitment initiatives.

- HR – education; management training; crisis
management; performance management; team building; pay
and initiative programs
- Physician Assistant/Nurse Practitioner Program
- Provider Recruitment
- Scribes
- Credentials
- Provider Enrollment
- Provider Master Database
- Compliance

Applicant describes its services as providing:
“consultants [that] understand your need for swift and
effective solutions. We will design a recruitment program
to increase and accelerate your revenue opportunities while
saving you time and money.” www.medstaffamerica.com. See
also Osborne declaration at 2 (“Med Staff America “provides
services related to physician recruiting and hiring”).
Opposition No. 91164205
11
Applicant’s and opposer’s services are very similar, if not
overlapping, to the extent that both services are involved
with recruiting medical personnel. We add that applicant’s
recruiting and placement services for medical professionals
would also be related to business management consultant
services because the consultant services could involve
personnel and staffing issues. While applicant’s witness
maintains opposer’s recruiting “is ancillary and minimal at
most… Opposer appears to be offering recruiting services, if
any, to already existing clients” (Osborne declaration at
2), we cannot agree. These services appear to be part of
its consulting services and offered to existing and new
customers. Thus, we find that the services are at least
very closely related. McDonald's Corp. v. McKinley, 13
USPQ2d 1895, 1898 (TTAB 1989) (“It is enough if there is a
relationship between them such that persons encountering
them under their respective marks are likely to assume that
they originate at the same source or that there is some
association between their sources”). See also In re Opus
One Inc., 60 USPQ2d 1812, 1814-15 (TTAB 2001).
Applicant’s clients include “hospitals, HMO’s, hospital
systems, clinics and group practices.”
www.medstaffamerica.com. Opposer’s clients are similar, if
not overlapping. www.medamerica.com (“MedAmerica has
partnered with hospitals and physicians”). Opposer’s
Opposition No. 91164205
12
services are provided to “medical groups consisting of over
1700 physicians and over 500 physician extenders; at
approximately 120 hospitals, over 36 ambulatory care
centers, and eight correctional medicine sites.” Harrington
declaration at 2. Therefore, the potential purchasers
overlap to the extent both would include hospitals and group
physician practices. It also appears that both opposer’s
and applicant’s services would be marketed through similar
channels of trade, such as professional publications, in
order to reach medical professional staffs.
In this case, we have found that the marks are similar.
We have taken into consideration the differences in the
marks but conclude that many purchasers would find these
marks similar. The services are closely related and when
the marks are used on these services, many purchasers are
likely to assume that there is some association between
applicant’s and opposer’s services. We add that we must
resolve any doubts we have about confusion in favor of
opposer/registrant, which we do, and we hold that there is a
likelihood of confusion. Chatam, 71 USPQ2d at 1948 and In
re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025,
1026 (Fed. Cir. 1988).
Decision: The opposition is sustained.