Baylor Health Care System

Trademark Trial and Appeal Board

Dec 6, 2001

No. 75095044 (T.T.A.B. Dec. 6, 2001)

12/06/01 Paper No. 14
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Baylor Health Care System
________

Serial No. 75/095,044
_______

Charles S. Cotropia of Sidley & Austin for Baylor Health
Care System.

Laurie A. Mayes, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Walters, Chapman and Bucher, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
On April 26, 1996, Baylor Health Care System filed an
application to register on the Principal Register the mark
HEALTHSOURCE for the following goods and services,
identified as amended: “printed educational materials
covering health care topics” in International Class 16, and
“providing health related and health care information
through the dissemination of printed material of others” in
International Class 42. Applicant claimed dates of first
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/095044
2
use and first use in commerce of March 23, 1992 for the
goods and services in both classes.1
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 used on or in connection
with its identified goods and services, so resembles the
registered mark HEALTH SOURCE for “computer services,
namely, providing access to computer databases featuring
indexes, abstracts and full text in the health care field”
in International Class 42,2 as to be likely to cause
confusion, mistake or deception.
Applicant has appealed, and briefs have been filed,
but applicant did not request an oral hearing.
We affirm the refusal to register. In reaching this
conclusion, we have followed the guidance of the Court in
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973).

1 Applicant claimed ownership of Registration No. 1,610,814,
issued August 21, 1990, for the mark HEALTHSOURCE for
“entertainment services in the nature of an informational medical
television program” in International Class 41. The records of
this Office show that registrant’s Section 8 affidavit was
accepted, and its Section 15 affidavit was acknowledged.
However, thereafter, in September 2001, applicant’s claimed
registration expired due to the failure to file a renewal.
2 Registration No. 2,073,435, issued June 24, 1997. Registrant
disclaimed the term “health.” The claimed date of first use is
January 1993.
Ser. No. 75/095044
3
We turn first to a consideration of the involved
marks. Applicant argued that there is an “admittedly” fine
distinction between its one-word mark HEALTHSOURCE from the
cited two-word mark HEALTH SOURCE. However, purchasers
would not notice or recall the fine distinction referred to
by applicant, and we find the marks are virtually identical
in sound, appearance, connotation, and commercial
impression.
The fact that the marks are virtually identical
“weighs heavily against applicant.” In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290
(Fed. Cir. 1984). Indeed, the fact that an applicant has
selected the virtually identical mark of a registrant
“weighs [so] heavily against the applicant that applicant’s
proposed use of the mark on “goods...[which] are not
competitive or intrinsically related [to registrant’s
goods]...can [still] lead to the assumption that there is a
common source.” In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1688-1689 (Fed. Cir. 1993). “The greater the
similarity in the marks, the lesser the similarity required
in the goods or services of the parties to support a
finding of likelihood of confusion.” 3 J. McCarthy,
McCarthy on Trademarks and Unfair Competition, §23:20.1
(4th ed. 1999).
Ser. No. 75/095044
4
We turn to a consideration of the cited registrant’s
services and applicant’s goods and services. Applicant’s
position is that its goods and services (“printed
educational materials covering health care topics” and
“providing health related and health care information
through the dissemination of printed material of others”)
and the cited registrant’s services (“computer services,
namely, providing access to computer databases featuring
indexes, abstracts and full text in the health care field”)
are dissimilar because applicant’s identified printed
materials relate to the basic education of the general
public on various health care topics, while registrant’s
identified computer database with full text stories “must
be in-depth articles and information relating to the
details of the particular topics addressed,” and relate to
providing “a sophisticated research tool for exploring the
intricate details of the health care issues addressed.”
(Brief, p. 7.)
Applicant also contends that the purchasers of its
goods and services are the general public, while
registrant’s database is intended for the sophisticated
purchaser, i.e., the health care professional or student;
that registrant’s services require the consumer to have
“specialized computer skills” (brief, p. 8); and that the
Ser. No. 75/095044
5
involved goods and services are sought and purchased with
special care because they relate to information and advice
relevant to health.
The Examining Attorney argues that the parties’ goods
and services are closely related because even though the
means of dissemination of the information is different,
nonetheless, both are for the purpose of providing
information on health to the public; and that the involved
goods and services travel in the same channels of trade to
the same purchasers. In support of her position as to the
relatedness of the respective goods and services, the
Examining Attorney submitted several third-party
registrations, all of which issued based on use in
commerce, and all of which specifically involve and relate
to the health care field. She offered these third-party
registrations to demonstrate that the same company will
disseminate information by different means, and
specifically, that health care information is provided in
both printed and electronic form, by showing that a single
entity has adopted a single mark for such goods and
services.3

3 See, for example, Registration No. 2,159,802 issued for, inter
alia, “printed materials, namely booklets, pamphlets, flyers and
brochures in the field of health” and “providing information
regarding health-related products via a global computer network”;
Registration No. 2,178,995 issued for, inter alia, “publications,
Ser. No. 75/095044
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While third-party registrations are not evidence of
commercial use of the marks shown therein, or that the
public is familiar with them, nonetheless, third-party
registrations which individually cover a number of
different items and which are based on use in commerce have
some probative value to the extent they suggest that the
listed goods emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB
1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d
1467, footnote 6 (TTAB 1988).
Moreover, it is well settled that goods or services
need not be identical or even competitive in order to
support a finding of likelihood of confusion. Rather, it
is sufficient that the goods or services are related in
some manner or that the circumstances surrounding their
marketing are such that they would be likely to be
encountered by the same persons in situations that would
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

namely, newsletters,... featuring information about health...”
and “providing a database of information online...regarding
women’s health”; and Registration No. 2,257,529 issued for, inter
alia, “printed materials, namely, a series of books,
pamphlets,... in the fields of health or health care” and
“providing ... information in the fields of health or health care
by ... electronic communications networks.”
Ser. No. 75/095044
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association between the producers of the goods or services.
See In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); and
In re International Telephone & Telegraph Corp., 197 USPQ
910 (TTAB 1978).
Also, it has been repeatedly held that, when
evaluating the issue of likelihood of confusion in Board
proceedings regarding the registrability of marks, the
Board is constrained to compare the goods and/or services
as identified in the application with the goods and/or
services as identified in the registration. See Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990); and Canadian Imperial
Bank of Commerce, National Association v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
In this case, we find that applicant’s goods and
services are similar in nature and closely related to
registrant’s services, as identified. Both parties provide
health care and health related information, with applicant
providing it through printed materials and registrant
providing it via a computer database. There are no
restrictions as to purpose, and both are broadly worded
identifications of goods and services which overlap.
Further, we disagree that the identifications of goods
and services restrict the channels of trade and/or the
Ser. No. 75/095044
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intended purchasers in the manner argued by applicant. The
restrictions applicant reads into the identifications are
not found in a reasonable reading of the respective
identifications of goods and services. Because neither
party’s identification restricts the trade channels or
purchasers, the Board must consider that the parties’
respective goods and services could be offered and sold to
the same classes of purchasers through all normal channels
of trade. See Canadian Imperial Bank v. Wells Fargo Bank,
supra; In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB
1994); and In re Elbaum, 211 USPQ 639 (TTAB 1981).
With regard to applicant’s argument that purchasers
are careful when seeking information on health issues, it
is not supported by any evidence. Even if we assume there
would be some degree of care exercised by consumers, when
the virtually identical mark is used on closely related
goods and services, consumers are likely to be confused as
to the source of the goods and services, despite the care
taken. Purchasers may believe that registrant is now
providing health information through printed materials, in
addition to its computer database of information on health
issues.
Ser. No. 75/095044
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According to applicant, there have been no instances
of actual confusion in seven years of coexistence of
applicant’s mark and the mark in the cited registration.
However, there is no evidence of applicant’s and
registrant’s geographic areas of sales, or the amount of
the sales under the respective marks. Further, there is no
information from the registrant. In any event, the test is
likelihood of confusion, not actual confusion. See Weiss
Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14
USPQ2d 1840 (fed. Cir. 1990); and In re Kangaroos U.S.A.,
223 USPQ 1025 (TTAB 1984). This factor is not persuasive
in applicant’s favor in the overall balancing of the du
Pont factors in this case.
Finally, applicant argued for the first time in its
brief that there are several similar marks registered for
goods and services “in the general field of health care.”
(Brief, p. 13.) The Examining Attorney objected to the
additional evidence submitted with applicant’s brief
requesting that it be excluded. First, applicant’s
reference to six third-party registrations was untimely
pursuant to Trademark Rule 2.142(d). See TBMP §1207.01.
Second, mere typed lists of registrations are not
sufficient to make them of record. The Board does not take
judicial notice of registrations residing in the USPTO.
Ser. No. 75/095044
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See In re Duofold Inc. 184 USPQ 638 (TTAB 1974); and In re
F.C.F. Inc., 30 USPQ2d 1825 (TTAB 1994). The objection is
well taken and this evidence was not considered.4
Decision: The refusal to register under Section 2(d)
is affirmed.

4 We note that even if considered the third-party registrations
would not alter our decision herein. While applicant argues the
six registrations are all for goods or services in the general
field of health care, some of the identifications (as typed out
by applicant) are in fact, unrelated to health care. For
example, “retail bookstore services excluding any publications or
other materials or services relating to medical furniture,”
“distributorship services in the field of groceries,” and
“dietary supplements in the nature of cholesterol-lowering
beverages and soy protein beverages.”