The Center for Clear Vision of Sinai Hospital

Trademark Trial and Appeal Board

Jan 25, 2001

No. 75401760 (T.T.A.B. Jan. 25, 2001)

1/25/01
Paper No. 12
HWR
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re The Center for Clear Vision of Sinai Hospital
________
Serial No. 75/401,760
_______
William M. Hanlon Jr. and Andrew R. Basile
of Young, Basile, Hanlon, MacFarlane, Wood & Helmholdt,
P.C. for applicant.
Caroline E. Wood, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______
Before Simms, Cissel and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
The Center for Clear Vision of Sinai Hospital has
filed an application to register the mark CLEAR VISION for
“ophthalmological and ophthalmic services specifically
surgical services.”1
1 Serial No. 75/401,760, filed December 8, 1997, claiming a first
use date and a first use in commerce date of May 1992. A
disclaimer has been made of the word VISION. The application has
been filed as a concurrent use application, citing the owner of
Serial No. 74/728,203 for the mark CLEARVISION for ophthalmology
and ophthalmic services as an exception to applicant’s exclusive
right to use of its mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/401,760
2
Registration has been finally refused under Section
2(d) of the Trademark Act on the ground of likelihood of
confusion with the registered marks CLEAR VISION for
“eyeglasses”2 and KLEER VISION for “devices for cleaning
eyeglasses, namely, sponges impregnated with a cleansing
and polishing solution, sold with a holder therefor”3 (these
registrations presently being owned by the same entity) and
with the registered mark BRINGING CLEAR VISION TO LIFE for
“ophthalmological services.”4
The final refusal has been appealed and both applicant
and the Examining Attorney have filed briefs. An oral
hearing was not requested.
We make our determination of likelihood of confusion
on the basis of those of the du Pont factors5 which are
relevant under the circumstances at hand and for which
evidence is of record. See Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000). Two key
considerations in any analysis are the similarity or
2 Registration No. 1,564,209, issued November 7, 1989, Section 8
& 15 affidavits accepted and acknowledged, respectively. A
disclaimer has been made of the word VISION.
3 Registration No. 1,265,473, issued January 31, 1984, Section 8
& 15 affidavits accepted and acknowledged, respectively.
4 Registration No. 1,514,942, issued November 29, 1988, Section 8
& 15 affidavits accepted and acknowledged, respectively.
5 See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973).
Ser No. 75/401,760
3
dissimilarity of the respective marks and the similarity or
dissimilarity of the goods or services with which the marks
are being used. See In re Azteca Restaurant Enterprises,
Inc., 50 USPQ2d 1209 (TTAB 1999) and the cases cited
therein.
Registration Nos. 1,564,209 and 1,265,473
Insofar as these two registered marks are concerned,
the mark CLEAR VISION is identical to applicant’s mark
CLEAR VISION and the mark KLEER VISION is virtually
identical thereto. The fact that KLEER VISION is the
phonetic, rather than visual, equivalent of applicant’s
mark makes little difference in the overall commercial
impressions created by the two marks. Applicant has even
acknowledged that its mark CLEAR VISION is “virtually
identical” to the marks CLEAR VISION and KLEER VISION.
The issue with respect to these marks lies in the
similarity or dissimilarity of the goods with which
registrant is using its marks and the services with which
applicant uses its mark.
The Examining Attorney has taken the position that the
eyeglasses and devices for cleaning the same are closely
related to the ophthalmological services of applicant. As
support for her argument that an association would be made
by the average purchaser between these goods and services,
Ser No. 75/401,760
4
the Examining Attorney has made of record copies of several
third-party registrations alleged to show that the same
entities offer both ophthalmological services and
eyeglasses under the same mark.
Applicant insists that the eyeglasses and related
goods involved here are not being sold to the general
consumer, but rather that registrant only sells its goods
to dealers and suppliers of eyeglass stores. On this
basis, applicant argues that not only are the goods and
services not the same, but the channels of trade for the
two are different.
In making this analysis of whether a relationship
exists between the goods and services, we are guided by the
standard that the greater the degree of similarity in the
marks, the lesser the degree of similarity that is required
between the goods or services on which the marks are being
used to support a likelihood of confusion. If the marks
are the same or almost the same, as is the case here, there
need only be a viable relationship between the goods and
services in order to support a holding of likelihood of
confusion. See In re Peebles Inc., 23 USPQ2d 1795 (TTAB
1992); In re Concordia International Forwarding Corp., 222
USPQ 355 (TTAB 1983).
Ser No. 75/401,760
5
Although applicant argues that registrant’s goods are
sold only to dealers and suppliers, and not directly to the
public, this argument is to no avail. There are no
restrictions in the cited registrations as to channels of
trade. Thus, registrant’s eyeglasses and cleaning devices
must be presumed to travel in all the normal channels of
trade for these goods. See Kangol Ltd. v. KangaROOS
U.S.A., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992). We
must assume the eyeglasses and cleaning devices would be
available directly to the general public. Furthermore,
even if sold by registrant to dealers or store suppliers,
the general public would still be the ultimate purchasers
of the goods and would encounter the marks being used
thereon.
Moreover, we find the evidence supplied by the
Examining Attorney adequate to show that eyeglasses may be
obtained from the same source which provides
opthalmological services and may bear the same mark. While
we are aware that applicant is providing surgical
ophthalmological services under its mark, such as laser eye
surgery, the ophthalmological services as identified in the
third-party registrations encompass surgical services of
Ser No. 75/401,760
6
this nature.6 Furthermore, as pointed out by the Examining
Attorney, in the specimens of record, the statement is made
that applicant is “a full-service eye care center not only
for eye exams, contacts, glasses and RK Surgery, but the
latest medical breakthrough for improving vision, Excimer
Laser Surgery.” Accordingly, we find this statement, taken
in conjunction with the third-party registrations for the
same mark for both ophthalmological services and
eyeglasses, sufficient to establish that the general
public, as purchasers of both the services and the goods,
would be likely to assume a common source therefor. This
is especially true when highly similar marks, such as are
involved here, are used in connection therewith. See In re
Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988).
Thus, we find that a close relationship exists between
the goods of registrant and the services of applicant, so
as to result in likelihood of confusion when the marks
CLEAR VISION (or KLEER VISION) are used in connection
therewith.
The circumstances here are not similar to those in the
cases cited by applicant in which distinctions were found
6 We note that we are referring to those third-party
registrations that specifically include ophthalmological
services, not those that cover only optometry or optician
services, which are not necessarily rendered by a medical doctor.
Ser No. 75/401,760
7
to exist either between the goods and services per se or
between the channels of trade. In particular, we note that
in In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993), there was no evidence that the ultimate purchasers
of the registrant’s leather goods would encounter the mark
of the producer of the leather in bulk, in addition to the
mark of the finished products. Here the evidence is
sufficient to show that consumers might very well encounter
eyeglasses bearing registrant’s CLEAR VISION mark while
availing themselves of applicant’s CLEAR VISION
ophthalmological services. We find confusion likely with
the contemporaneous use of CLEAR VISION (and KLEER VISION)
marks by registrant and applicant on the respective goods
and services.
Registration No. 1,514,942
Here there is no question as to the similarity of the
services of applicant and the registrant. Registrant’s
“ophthalmological services” fully encompass the specific
ophthalmological surgical services of applicant.
Thus, the only issue is the degree of similarity or
dissimilarity of the marks being used in connection with
these services, namely between registrant’s mark, BRINGING
CLEAR VISION TO LIFE, and applicant’s mark, CLEAR VISION.
Ser No. 75/401,760
8
The Examining Attorney argues that the phrase CLEAR
VISION is the dominant portion of registrant’s slogan mark
and as such, the mark in its entirety creates a similar
commercial impression to applicant’s mark CLEAR VISION.
Applicant, on the other hand, insists that registrant’s
mark evokes a completely different commercial impression,
namely, that registrant’s mark conveys the “idea” that
something is brought to life, whereas applicant’s does not.
We are fully aware that marks must be considered in
their entireties when determining likelihood of confusion.
Nonetheless, it is also well established that there is
nothing improper, under certain circumstances, to give more
or less weight to a particular portion of a mark. See In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985). We find the term CLEAR VISION to be the
dominant portion of registrant’s mark, despite its presence
in a slogan, rather than in a simple word mark. Both marks
are being used with opthalmological services and both
convey the same promise or expected result: CLEAR VISION.
While there are obvious differences in appearance and sound
between the marks, we cannot agree that the commercial
impressions created by the marks as a whole are dissimilar.
Furthermore, there is no additional element in
applicant’s mark which might serve to distinguish it from
Ser No. 75/401,760
9
registrant’s mark. The many cases cited by applicant deal
with different marks used under different circumstances and
cannot be likened to the present situation. We note
particularly that infringement actions involve different
factors, several of which are not relevant to proceedings
before the Board, where the only issue is registrability.
Accordingly, we find confusion likely to result from
the contemporaneous use by applicant of its CLEAR VISION
mark and registrant of the mark BRINGING CLEAR VISION TO
LIFE for ophthalmological services.
Copending Application Serial No. 74/728,203
Applicant has pointed to the existence of copending
application 74/728,203 for CLEARVISION for similar
services, owned by a different entity, which was published
for opposition without citation of the registered marks
involved here. This application is presently the subject
of an opposition filed by applicant and, as a settlement of
this opposition, has been referred to as an exception to
applicant’s exclusive use in the instant concurrent use
application. Applicant contends the passage through
examination of the copending application without citation
of the present references should be considered as a factor
in applicant’s favor.
Ser No. 75/401,760
10
As we have often stated, each case must be decided on
its own merits. The allowance of another mark by another
Examining Attorney, regardless of the similarity of the
mark to applicant’s mark, is not binding on the Board. We
do not have the file history before us, and even if we did,
we would not be required to permit the registration of yet
another mark which we find likely to cause confusion with
previously registered marks. See In re National Novice
Hockey League, Inc., 222 USPQ 638 (TTAB 1984) and the cases
cited therein.
Decision: The refusal to register under Section 2(d)
is affirmed.
Ser No. 75/401,760
11