Professional Systems Corp.

Trademark Trial and Appeal Board

Sep 17, 2001

No. 75461790 (T.T.A.B. Sep. 17, 2001)

9/17/01 Paper No. 16

GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Professional Systems Corporation
________

Serial No. 75/461,790
_______

Timothy D. Pescenye and Christopher M. Turk of Blank Rome
Comisky & McCauley LLP for Professional Systems Corporation.

Michael W. Baird, Trademark Examining Attorney, Law Office 109
(Ronald R. Sussman, Managing Attorney).
_______

Before Cissel, Quinn and Hohein, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Professional Systems Corporation has filed an
application to register the mark "DATAEXPRESS" for "invoicing
services, namely, collecting and assembling billing
information, [and] generating and mailing statements,
invoices, reports and collection letters."1

1 Ser. No. 75/461,790, filed on April 3, 1998, which alleges a date
of first use anywhere and in commerce of October 1997.

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/7461,790
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 "NDEX NETWORK DATA EXPRESS," which is
registered for "electronic transmission of messages, data and
documents in the field of healthcare",2 as to be likely to
cause confusion, mistake or deception.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We reverse the refusal to
register.
The 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 of the goods and/or services
and the similarity or dissimilarity of the marks.3

2 Reg. No. 2,005,132, issued on October 1, 1996, which sets forth a
date of first use anywhere of January 27, 1995 and a date of first
use in commerce of April 19, 1995. The words "NETWORK DATA" are
disclaimed.

3 The court, in particular, pointed out that: "The fundamental
inquiry mandated by §2(d) goes to the cumulative effect of
Ser. No. 75/7461,790
3
Turning first to consideration of the respective
services, it is well settled that services 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 services are related in some manner and/or that the
circumstances surrounding their 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
entity 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).
In the present case, applicant contends that
"registrant's communication services are quite different than
the ... invoicing services which are provided by applicant
under its mark." According to applicant, its services "are in
the nature of traditional bookkeeping, but using computer
technology to efficiently provide such services." While
admitting in its brief that "electronic communication of data
is used by applicant for connecting applicant's customers to
applicant's computers in order to render applicant's invoicing

differences in the essential characteristics of the goods [and/or
Ser. No. 75/7461,790
4
services," applicant argues that "this communication of data
is ancillary to applicant's invoicing services and is not a
separate service." Consequently, applicant insists that its
services "are not directed to addressing the existing
electronic network data communication of a customer's data to
patients or their healthcare providers." Instead, applicant
maintains that, among other things, its services "are
specifically to assist the accounting department[s] of
healthcare providers to perform their invoicing function" and,
thus, it "does not provide services for addressing the general
communication of network data" like registrant does.
Applicant, in view thereof, urges that its services "are
different in kind and would be purchased by different parties
than registrant's" services.
Applicant supports its position with a declaration
which is of record from its chief executive officer, Joseph J.
Greco. In his declaration, Mr. Greco variously states that he
has 20 years of "experience within the invoicing processing
industry"; that applicant "operates state of the art systems
for statement and collection letter processing, printing and
mailing"; that under its "DATAEXPRESS" mark, applicant offers
"traditional bookkeeping services, but uses computer
technology to provide the services," which consist of "state

services] and differences in the marks."
Ser. No. 75/7461,790
5
of the art automated processing, printing and mailing of
invoices and collection letters"; that such services "assist
the accounting departments in various industries, including
healthcare providers, to perform their invoicing functions";
that such services, however, "are not useful only in the
healthcare field, but also have utility in other fields which
seek to out[-]source statement and collection letter
processing, printing and mailing"; that registrant's services,
by contrast, "are directed to the electronic transmission of
messages, data, and documents in the healthcare field" and are
thus "quite different from the invoicing services which are
provided by" applicant under its mark; that applicant "does
not provide services for addressing the general communication
of network data"; that while applicant "can receive data
electronically from its customers, this communication of data
is ancillary to" applicant's "invoicing services and is not a
separate service"; and that applicant "has processed, printed
and mailed invoices and collection letters based on
information received from customers other than through
electronic data transmission, e.g., printed information or
data on computer disks sent by mail or courier service."
We agree with the Examining Attorney that, as he
concedes in his brief, the respective services "are
specifically different." We also concur with the Examining
Ser. No. 75/7461,790
6
Attorney that such specifically different services are,
however, related in a meaningful commercial sense at least to
the limited extent that registrant's "electronic transmission
of messages, data and documents in the field of healthcare"
are services which, as the Examining Attorney points out,
"could be used to transmit data and documents" to applicant
for use, in turn, in the rendering, to those in the healthcare
field, of its "invoicing services, namely, collecting and
assembling billing information, [and] generating and mailing
statements, invoices, reports and collection letters."4 As
the Examining Attorney accurately observes:
[The] advertising specimens submitted by
Applicant tout the ease of electronically
transmitting files to Applicant. For
example, the cover of Applicant's brochure
indicates that Applicant's services consist
of "Electronic Data Exchange for Patient
Statement and Collection Letter Processing,
Printing and Mailing." Inside the
brochure, a potential customer is told,
"It's easy! Your computer system's patient
billing files can be electronically
transmitted, 24 hours a day, seven days a

4 We disagree, however, with the Examining Attorney's further
assertion that the respective services "are directly competitive, at
least in part," because, just as "[a] medical practice has the option
of using Applicant's services to mail statements, invoices, reports,
and collection letters," it is also the case that, "alternatively,
the registrant's services may be used to deliver such documents
electronically." It appears to us, instead, that a medical firm
which utilizes applicant's invoicing services to generate and mail
billing statements, collection letters and the like would have no
need to use registrant's electronic information transmission services
to deliver the same documents produced as part of applicant's
services.

Ser. No. 75/7461,790
7
week, via internet, modem or other
electronic medium to the DataExpress
Processing Center."

Thus, both services, as the Examining Attorney persuasively
notes, "target the same small group of consumers, [namely,]
those members of a medical practice who are responsible for
the electronic transmission of documents" for purposes of
patient billing or invoicing. If such services, therefore,
were to be provided under the same or substantially similar
marks, confusion as to the source of sponsorship thereof would
be likely to occur.
Turning, therefore, to consideration of the marks at
issue, applicant notes, with respect to registrant's "NDEX
NETWORK DATA EXPRESS" mark for "electronic transmission of
messages, data and documents in the field of healthcare," that
"there are a number of marks which include DATA or DATA
EXPRESS for the same or virtually identical services."
Specifically, the record contains copies of subsisting third-
party registrations for the marks "IDX PARTNERSHIP
INTERNATIONAL DATA EXPRESS" and design ("DATA EXPRESS"
disclaimed) for "telecommunications and data storage and
forward services, namely, sending and receiving facsimile,
electronic mail, voice, audio, video, data, and interactive
voice response (IVR) transmissions for others"; "DATA EXPRESS"
and design ("DATA" disclaimed) for "electronic transmission of
Ser. No. 75/7461,790
8
digital information from one location to another"; and "AIR
DATA EXPRESS" ("DATA EXPRESS" disclaimed) for "electronic and
wireless transmission of messages, data and documents."5
Applicant maintains that the existence of such registrations
"demonstrates that the terms DATA and EXPRESS, the only common
portion of the marks, are relatively weak in the field of
data/information exchange or transmission," citing In re Dayco
Products-Eaglemotive Inc., 9 USPQ2d 1910, 1911-12 (TTAB 1988).
Applicant also contends that "[t]he further weakness of the
mark[s] is illustrated by the disclaimer of the DATA or DATA
EXPRESS elements in the above registrations and the disclaimer
of NETWORK DATA in the [cited] registration." In view of the
weakness of the term "DATA EXPRESS," due to the
descriptiveness, or at least a high degree of suggestiveness,
inherent therein, applicant asserts that the mark which is the
subject of the cited registration is entitled to only a narrow
scope of protection and that it is not likely that customers
for the specifically different services offered by applicant
and the cited registrant will be confused as to the source or
sponsorship of such services.
Applicant also argues that "[a]n analysis of the
marks [at issue] in their entiret[ies] reflect[s] that they

5 In addition, the record contains a copy of a subsisting third-party
registration for the mark "CCMM DATA EXPRESS" ("DATA" disclaimed) for
"data communications processing apparatus for use with computers."
Ser. No. 75/7461,790
9
create entirely different commercial impressions" inasmuch as
the predominant features of the cited registrant's mark are
the terms "NDEX and "NETWORK." The overall commercial
impression of such mark, applicant urges, "stresses the
networking and data transmission aspect of the [cited
registrant's] services" since "[t]he eye is naturally drawn to
the first portion of the mark." Moreover, according to
applicant, the shared words "DATA EXPRESS" in the marks at
issue are, as noted above, "relatively weak" and thus "have a
lesser significance as a source identifier," especially "when
applied to services relating to the transmission of data," as
is the case with the cited registrant's mark.
As to another of the du Pont factors, namely, the
conditions under which and buyers to whom sales are made,
applicant observes that "[w]here the decision to purchase is
made by a sophisticated purchaser and concerns an expensive
product, or is made after careful examination of the product,
it may be enough to negate a likelihood of confusion." Here,
applicant asserts, its services "are relatively expensive and
involve giving a third party access to sensitive billing,
customer and financial information." Inasmuch as "an
organization that decides to use that service will only make
the purchasing decision after careful consideration,"
applicant concludes that confusion as to origin or affiliation
Ser. No. 75/7461,790
10
of the respective services is not likely from the
contemporaneous use of the marks at issue.
The Examining Attorney, on the other hand,
acknowledges that applicant is correct in its contention that
third-party registrations are useful both to demonstrate the
sense in which a term is used in ordinary parlance and to show
that a particular term has been adopted by those engaged in a
certain field or industry because of the descriptive or
suggestive significance conveyed by such term. The Examining
Attorney, furthermore, admits that in this case "[t]he
registrations referenced by Applicant appear to support
Applicant's contention that the wording DATA EXPRESS is weak
with regard to electronic message transmission services."
However, the Examining Attorney asserts that the fact that
"the term DATA EXPRESS may be relatively weak in the field of
electronic transmission of data does not mean that the term is
also weak in Applicant's related field of 'invoicing services,
namely, collecting and assembling billing information,
generating mailing statements, invoices, reports, and
collection letters.'"
While the Examining Attorney thus concludes that
"the relative weakness of the registrant's mark [does not]
completely obviate any likelihood of confusion," it
nevertheless stands to reason that, if differences in the
Ser. No. 75/7461,790
11
other portions of marks containing the term "DATA EXPRESS" are
sufficient to distinguish such marks, due to the admitted
weakness of the term "DATA EXPRESS," with respect to various
electronic message transmission services," then the narrow
scope of protection to which registrant's mark is entitled in
its own field should be even more limited when considered
against a mark sharing only the term "DATA EXPRESS" in an
entirely different industry, to which electronic message
transmission services are only ancillary to the services being
rendered. Such is plainly the case with applicant's
"DATAEXPRESS" mark for its various invoicing services, since
while its services and the electronic messaging and data
transmission services offered by the cited registrant are
commercially related to a limited degree in that both involve
transmission of documents and data, they nevertheless are
otherwise specifically different. Applicant's services focus
on invoicing and other matters of patient billing, while those
of the cited registrant are basically that of a communications
common carrier for the healthcare field. As a result,
circumstances conducive to a likelihood of confusion are
substantially reduced.
With respect to the overall commercial impressions
engendered by the respective marks, the Examining Attorney
emphasizes that such marks "are clearly similar, as the
Ser. No. 75/7461,790
12
registered mark contains Applicant's mark in its entirety."
The Examining Attorney also contends that this is not a
situation "where the appropriated wording is merely an
insignificant part of a larger whole; instead, the term DATA
EXPRESS comprises exactly half of the registrant's four-word
mark." While the Examining Attorney concedes that
"[a]pplicant's mark and, by incorporation, the registrant's
mark[,] are both highly suggestive of information and speed,"
he asserts that the points of similarity of the marks are of
greater importance than the points of difference due,
apparently, to the fact that applicant's mark and registrant's
mark "contain the wording DATA EXPRESS and are likely to have
the same commercial impression." In view thereof, the
Examining Attorney argues that "[c]onsumers are likely to
arrive at the incorrect conclusion that applicant's DATA
EXPRESS [sic, should be DATAEXPRESS] mark is merely a
shortened form of the registrant's NDEX NETWORK DATA EXPRESS
[mark]."
We agree with applicant, however, that the
respective marks, when considered in their entireties, project
different commercial impressions and hence are
distinguishable, especially when used in connection with
specifically different services. As the Examining Attorney
concedes, the "DATA EXPRESS" portion of registrant's mark and
Ser. No. 75/7461,790
13
applicant's "DATAEXPRESS" mark "are both highly suggestive of
information and speed." Such terms, therefore, are not only
relatively weak, and in themselves are entitled only to a
limited scope of protection, but registrant's mark adds the
conspicuously different terms "NDEX NETWORK" as the first and
most prominent elements of such mark. Thus, when used in the
context of registrant's "electronic transmission of messages,
data and documents in the field of healthcare," the
connotation and overall commercial impression engendered by
registrant's "NDEX NETWORK DATA EXPRESS" mark is of a high
speed data network offered under the principal source-
indicative term "NDEX." In striking contrast, applicant's
"DATAEXPRESS" mark for its "invoicing services, namely,
collecting and assembling billing information, [and]
generating and mailing statements, invoices, reports and
collection letters," projects an image of high speed
conversion of billing information into invoices and similar
kinds of statements. Moreover, because the terms "NDEX
NETWORK" constitute the first two words of registrant's "NDEX
NETWORK DATA EXPRESS" mark, they lend such mark a
significantly different overall commercial impression than
would be the case if the mark were, for example, "DATA EXPRESS
NDEX NETWORK." The notable inclusion of the terms "NDEX
NETWORK" as the first two elements of registrant's mark,
Ser. No. 75/7461,790
14
together with the high degree of suggestiveness inherent in
the terms "DATA EXPRESS" and the equivalent term
"DATAEXPRESS," are accordingly sufficient to distinguish
registrant's "NDEX NETWORK DATA EXPRESS" mark from applicant's
"DATAEXPRESS" mark.
Finally, we concur with applicant that the nature of
the conditions under which and buyers to whom sales of the
respective services are made are such that, as a practical
matter, confusion is not likely to occur from contemporaneous
use of the marks at issue. In the case of registrant's
"electronic transmission of messages, data and documents in
the field of healthcare," it is clear that physicians,
pharmacists, nurses and other healthcare professionals and
their support staffs are, by the very nature of operating a
medical practice, highly knowledgeable and sophisticated
customers in general and would be expected to exercise a high
degree of care and discrimination in the selection of goods
and services used in connection therewith. See, e.g., Warner-
Hudnut, Inc. v. Wander Co., 280 F.2d 435, 126 USPQ 411, 412
(CCPA 1960) [physicians and pharmacists constitute "a highly
intelligent and discriminating public"]. To the extent that
applicant's "invoicing services, namely, collecting and
assembling billing information, [and] generating and mailing
statements, invoices, reports and collection letters," are
Ser. No. 75/7461,790
15
directed to the same classes of healthcare providers, such
services would likewise be purchased with care and
deliberation, principally by those in charge of the accounting
departments of the healthcare providers. Coupled with the
fact that applicant's services would be relatively expensive
and involve accessing sensitive billing, customer and
financial information, the selection thereof would be made
only after careful consideration and deliberation, thereby
additionally lessening the prospects of a likelihood of
confusion. See, e.g., Electronic Design & Sales Inc. v.
Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388,
1392 (Fed. Cir. 1992).
Accordingly, notwithstanding that to a limited
extent, the respective services are related, given the facts
that such services nevertheless are specifically different;
that in their entireties the marks at issue are
distinguishable in connotation and overall commercial
impression; and that the purchase of such services under the
respective marks is done carefully and with deliberation, we
find that confusion is not likely to result from the
contemporaneous use by applicant of the mark "DATAEXPRESS" for
its "invoicing services, namely, collecting and assembling
billing information, [and] generating and mailing statements,
invoices, reports and collection letters" and the mark "NDEX
Ser. No. 75/7461,790
16
NETWORK DATA EXPRESS" by registrant for its "electronic
transmission of messages, data and documents in the field of
healthcare."
Decision: The refusal under Section 2(d) is
reversed.