University of Iowa

Trademark Trial and Appeal Board

Sep 5, 2001

No. 75710869 (T.T.A.B. Sep. 5, 2001)

Hearing: 9/5/01 Paper No. 11
July 24, 2001 DEB

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re University of Iowa d/b/a University Health Care
________

Serial No. 75/710,869
_______

Kirk M. Hartung and Wendy K. Marsh of Zarley McKee Thomte
Voorhees & Sease for the University of Iowa.

Linda E. Blohm, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Seeherman, Wendel and Bucher, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
University of Iowa d/b/a University Health Care has
applied to register UI HEALTH CARE (HEALTH CARE disclaimed)
for the following services, as amended, “educational
services, namely, conducting classes, conferences, seminars
and workshops in the fields of medicine and nursing,” in
International Class 41, and “inpatient and outpatient
medical services; medical and health care research,” in
International Class 42.1

1 Application Serial No. 75/710,869, filed May 20, 1999,
asserting a bona fide intention to use the mark in commerce.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/710,869
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Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. §1052(d), in view of a
registration owned by Upledger Institute for the stylized
UI mark as shown below:

for “providing courses of instruction in various modalities
to healthcare practitioners,” in International Class 41,
and for “medical services,” in International Class 42.2
This appeal has been fully briefed by applicant and by
the Trademark Examining Attorney. At applicant’s request,
an oral hearing was held before this Board.
In the course of rendering this decision, we have
followed the guidance of In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973).
This case sets forth the factors that should be considered
in determining likelihood of confusion.
We turn first to a consideration of the services.
Registrant and applicant have both recited services in two
international classes. In class 41, applicant has recited

2 Reg. No. 2,130,160 issued on January 20, 1998.

Serial No. 75/710,869
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its services as “educational services, namely, conducting
classes, conferences, seminars and workshops in the fields
of medicine and nursing.” The cited registration lists
“providing courses of instruction in various modalities to
healthcare practitioners.” While the recitations employ
different wording, these are legally identical educational
services directed to medical, nursing and/or other health
care professionals. The recitations in class 42 are in
part legally identical in that both include “medical
services” (applicant’s recitation being broader in that it
also includes “medical and health care research”).
Although applicant argues that the respective services are
not identical, it does not attempt to explain the
differences. Additionally, we note that there are no
limitations in the recitation of services in the
application or the registration as to any particular
channels of trade or type of purchaser. Accordingly, it
must be presumed that the services of both would be offered
in the same channels of trade to the same potential
purchasers. See Canadian Imperial Bank of Commerce
National Association v. Wells Fargo Bank, 811 F2d. 1490, 1
USPQ2d 1813 (Fed. Cir. 1987).
Clearly, if these educational and medical services
were to be rendered under the same or similar marks,
Serial No. 75/710,869
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confusion as to the source or sponsorship of such services
would be likely to occur. As we turn to a comparison of
the similarity or dissimilarity of the respective marks at
issue herein, we are guided by the well-recognized
principle that the degree of similarity necessary to
support a conclusion of likelihood of confusion decreases
when the marks are being used on virtually identical
services. See Century 21 Real Estate Corp. v. Century Life
of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
In considering the marks herein, applicant argues that
the cited UI mark is actually such a highly-stylized logo
that it is difficult to be sure which letter or letters it
represents. Applicant also claims that the Trademark
Examining Attorney has improperly dissected its own
composite mark to support a finding of likelihood of
confusion. Accordingly, applicant maintains that when the
marks are compared in their entireties, the words HEALTH
CARE in its mark serve as a distinguishing factor. By
contrast, the Trademark Examining Attorney argues that the
letters UI are totally arbitrary while the designation
HEALTH CARE is generic in this field.
As to the stylization of the cited mark, we conclude
that consumers will recognize this as the stylized letters
“U” and “I.” Further, as noted by the Trademark Examining
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Attorney, applicant is seeking registration for the word
mark UI HEALTH CARE in a typed format. Applicant’s
registration of its mark in typed format would give
applicant rights to the mark in all normal and reasonable
manners of presentation. See Jockey International Inc. v.
Mallory & Church Corp., 25 USPQ2d 1233, 1235-36 (TTAB
1992). Although such rights would not extend to the highly
stylized form depicted in the registered mark, applicant
could certainly use a similar type style for the separate
letters “U” and “I.”
Additionally, although the term HEALTH CARE at the end
of applicant’s mark results in that mark being longer by
two words than registrant’s mark, its presence is not
sufficient to distinguish the marks. It is well
established that, although marks must be compared in their
entireties, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark. In re National Data
Corp.¸753 F.2d 1056, 2224 USPQ 749 (Fed. Cir. 1985). The
term HEALTH CARE has, at the very least, a highly
descriptive meaning in the context of medical education and
health care services. In this connection, we also note
that applicant has disclaimed exclusive rights to the
designation HEALTH CARE, thus admitting its descriptive
Serial No. 75/710,869
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significance. Because of the descriptive significance of
HEALTH CARE for applicant’s services, it will not be
accorded as great a source-identifying weight by consumers
as will the arbitrary designation, UI – clearly the
dominant element of applicant’s mark.
Applicant also makes the argument that inasmuch as the
cited registration is owned by Upledger Institute, the UI
of the cited mark is “highly suggestive.” To the extent
applicant is asserting that the cited registration is
entitled to a limited scope of protection because UI
represents the initials of registrant’s trade name, there
are two immediate problems with this analysis. First, the
term “Upledger Institute” itself appears to be arbitrary
for medical education and health care services. Second,
even if we had some basis on which to conclude that members
of the relevant public viewed the initialism UI as
synonymous with Upledger Institute, the initials are still
deemed arbitrary for these services.
Furthermore, to the extent that applicant is trying to
assert that members of the relevant public understand the
initialism UI to refer to Upledger Institute, there is no
evidence in the record to support this contention.
Moreover, if this were the case, consumers would be likely
Serial No. 75/710,869
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to make the same connection between the UI in applicant’s
mark and registrant, Upledger Institute.
As to the du Pont factor dealing with the number and
nature of similar marks in use on similar goods, applicant
argues that the cited mark is weak because there exists a
single third-party registration of another stylized UI mark
for insurance underwriting.3 However, while this
registration does include underwriting for accident and
health insurance, use of the same two-letter designation
for insurance underwriting services hardly demonstrates
that UI is at all weak for medical education and health
care services.
Furthermore, this third-party registration is not
evidence that the mark shown therein is in commercial use,
or that the public is familiar with this mark. See In re
Albert Trostel & Sons Co. 29 USPQ2d 1783 (TTAB 1993).
Thus, this single registration in a different field
provides no evidence that the cited registration is
entitled to only a limited scope of protection in the
relevant field.

3 Reg. No. 882,647, issued to United
Insurance Company of America on December
16, 1969, for “underwriting life, health,
and accident insurance,” for the stylized
UI mark as shown to the right à

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In conclusion, the designation UI appears to be
totally arbitrary in the present context, and applicant’s
services are identical to those in the cited registration.
Given these circumstances, we find that applicant’s mark is
sufficiently similar to the registrant’s stylized mark that
if applicant were to use the applied-for mark in commerce,
confusion would be likely.
Finally, we note that if there were any doubt in our
minds on the issue of likelihood of confusion, we resolve
that doubt, as we must, in favor of the prior registrant.
See In re Hyper Shoppes (Ohio) Inc., 837 F.2d 463, 6 USPQ2d
1025 (Fed. Cir. 1988); In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); and
Giant Food Inc. v. Nation’s Foodservice, Inc., 710 F.2d
1565, 218 USPQ 390 (Fed. Cir. 1983).
Decision: The refusal to register under Section 2(d)
of the Act is affirmed.