Blossom Disposable Products

Trademark Trial and Appeal Board

Mar 12, 2007

No. 78498758 (T.T.A.B. Mar. 12, 2007)

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B

Mailed:
March 12, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Blossom Disposable Products
________

Serial No. 78498758
_______

David A. Payne of Medlen & Carroll, LLP for Blossom
Disposable Products.

Maureen L. Dall, Trademark Examining Attorney, Law Office
117 (Loretta C. Beck, Managing Attorney).
_______

Before Walsh, Taylor, and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Blossom Disposable Products filed an intent-to-use
application for the mark shown below for “gloves, caps,
gowns, masks, scrub suits, and shoe covers for medical,
surgical, and dental use.”1

1 Application Serial No. 78498758, filed October 12, 2004.
Serial No. 78498758
2
Registration has been refused under Section 2(d) of
the Lanham Act, 15 U.S.C. §1052(d). The Trademark
Examining Attorney contends that applicant’s mark so
resembles the mark A1 Scrubs (standard character format)
for “mail order and online retailing services featuring
medical scrubs and nursing uniforms” as to be likely to
cause confusion, to cause mistake, or to deceive.2 When the
refusal was made final, applicant appealed. Applicant and
the Examining Attorney have filed briefs.
We affirm.
The record consists of the application and the
following evidence submitted by the Examining Attorney:
1. Copies of thirty-three (33) use based, third-
party registrations for a wide variety of medical
apparel, including scrubs, gowns, gloves, and
other medical supplies. The following four (4)
registrations were for both medical apparel and
services relating to the sale of those products:

A. Registration No. 1,800,406 for the mark
STANDARD TEXTILE for “scrub apparel for men
and women” and “mail order catalog services
via telephone, in the field of medical
personnel clothing”;

B. Registration No. 2,005,836 for the mark AT
WORK UNIFORMS and Design for “surgical
scrubs, patient gowns” and “wholesale
distributorship services in the field of
uniforms related and related work apparel”;
C. Registration No. 2,558,145 for the mark
SCRUBS & BEYOND and Design for “medical

2 Registration No. 2,946,164, issued May 3, 2005. Registrant
disclaimed the exclusive right to use “Scrubs.”
Serial No. 78498758
3
scrub apparel and related products, namely,
scrub suits, scrub tops, scrub bottoms, and
scrub jackets” and “retail stores featuring
medical scrub apparel and related products,
namely, scrub suits, scrub tops, scrub
bottoms, and scrub jackets”; and,

D. Registration No. 3,033,136 for the mark
TREAT YOUR HANDS WELL for “medical gloves
and surgical gloves” and “distributorship in
the field of gloves”; and,

2. Excerpts from approximately twenty-four websites
for medical apparel of which four use the same
mark or trade name in connection with medical
apparel and online sales (i.e., cloward.com,
medicalsupreme.com, nizamcanvas.com, and
preceptmed.com).

Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion. 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 Company, Inc., 315 F.3d 1311, 65 UPSQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. Han Beauty Inc. v. Alberto-
Culver Co., 236 F.3d 1333, 57 UPSQ2d 1557, 1559 (Fed. Cir.
2001); Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).

Serial No. 78498758
4
A. The similarity or dissimilarity of the marks.
With respect to the marks, we must determine whether
applicant’s mark and registrant’s mark, when compared in
their entireties, are similar or dissimilar in terms of
sound, appearance, connotation and commercial impression.
In re E.I. du Pont de Nemours & Co., supra. While marks
must be compared in their entireties, it is not improper to
accord more or less weight to a particular feature of a
mark. In re National Data Corp., 753 F.2d 1056, 224 UPSQ
749, 751 (Fed. Cir. 1983). That a particular feature of a
mark is descriptive with respect to the goods and services
at issue (i.e., the word “scrubs” in connection with
medical scrubs) is one reason for giving less weight to
that portion of the mark. Id. Furthermore, the test is
not whether the marks can be distinguished when subjected
to a side-by-side comparison, but rather whether the marks
are sufficiently similar in terms of their commercial
impression that confusion as to source of the goods and
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); Winnebago
Serial No. 78498758
5
Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335,
344 (TTAB 1980).
In analyzing a composite mark comprising words and a
design, the word portion of the mark (i.e., A1) is usually
considered the dominant part of a mark because it is more
easily remembered and used in communications. Consumers
will not reference the stylized font or square background
design of applicant’s mark when asking for or discussing
applicant’s medical apparel. CBS Inc. v. Morrow, 708 F.2d
157 9, 218 USPQ 198, 200 (Fed. Cir. 1983); In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987).
Because the registered mark A1 Scrubs is in standard
character form (i.e., standard typed letters), its rights
reside in the term “A1 Scrubs” and not in any particular
depiction of it. Therefore, in our evaluation of
registrant’s mark, the protection to be given the mark must
include the display of “A1 Scrubs” in the same stylized
font in which applicant’s mark is depicted. In re
Melville Corp., 18 USPQ2d 1386, 1387 (TTAB 1991); Sunnen
Products Co. v. Sunex International Inc., 1 UPSQ2d 1744,
1747 (TTAB 1987).
Moreover, the background design of applicant’s mark is
a relatively common square shape and, therefore, the
background design is unlikely to be remembered when
Serial No. 78498758
6
consumers are confronted with a substantially similar word
mark. In re Decombe, 9 USPQ2d 1813, 1814 (TTAB 1988).
Applicant’s mark is not so highly stylized that the
design itself functions as a trademark. Because the letter
and number “A1” is readily recognizable, the marks have the
character of a word mark that can be spoken. As indicated
above, under actual marketing conditions, consumers do not
necessarily have the luxury of making side-by-side
comparisons between marks, and must rely upon their
imperfect recollections. Dassler KG v. Roller Derby Skate
Corporation, 206 USPQ 255, 259 (TTAB 1980). Because both
marks contain the same letter and number, A1, that can and
are likely to be articulated when referring to the marks,
consumers are likely to remember the letter and number
elements. Even if they note that applicant’s mark contains
a design element, they are likely to view the marks as
variations of each other, one mark identifying medical
wearing apparel and one mark identifying services for
selling medical wearing apparel. Accordingly, the dominant
element of applicant’s mark is the term A1.
We find that applicant’s mark and registrant’s mark
are similar in appearance. Although there are clearly some
visual differences in the marks, including applicant’s
stylized font and square background, and the presence of
Serial No. 78498758
7
the descriptive word “Scrubs” in the registered mark, the
overall similarities of A1 Scrubs and outweigh the
dissimilarities.
As for the sound of the marks, they are likely to have
similar, if not identical, pronunciations. Although
registrant’s mark includes the descriptive word “Scrubs,”
that word would not be regarded as having source-indicating
significance. The inclusion or absence of “Scrubs” when
the marks are spoken would not cause consumers to view the
marks as different. Therefore, the overall sound of the
marks will be the same.
Both marks have the same connotation. The term “A1”
means “number one” or “first-class; excellent; superior.”3
As a result, both marks engender the same commercial
impression. Applicant’s mark creates the commercial
impression of first-class or superior medical apparel and
the registrant’s mark A1 Scrubs creates the commercial
impression of a first-class or superior mail order and
online retail service.
We find, therefore, that the marks are similar.

3 Dictionary.com Unabridged (v.1.1) based on the Random House
Unabridged Dictionary (2006). We may take judicial notice of
dictionary definitions, including online dictionaries that exist
in printed format or have regular fixed editions. In re Red Bull
GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Serial No. 78498758
8
B. The similarity or dissimilarity of the goods.

The thrust of applicant’s argument is that
registrant’s mark is for services (“mail order and online
retailing services featuring medical scrubs and nursing
uniforms”) and not for any products covered in the
application. Therefore, applicant’s products are not
related to the registrant’s services.
In analyzing the similarity or dissimilarity of the
goods and services, we start with the well-settled
proposition that it is not necessary that the goods of the
applicant and the services of the registrant be similar or
even competitive to support a finding of likelihood of
confusion. Likelihood of confusion may be found if the
respective goods and services are related in some manner
and/or if the circumstances surrounding their marketing are
such that they would be likely to be encountered by the
same persons under conditions that could give rise to the
mistaken belief that they emanate from the same source. In
re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1469 (TTAB 1988);
Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590, 595-596
(TTAB 1978.
In this regard, we have previously held that store
services and the products that may be sold in that store
are related goods and services for the purpose of
Serial No. 78498758
9
determining likelihood of confusion. In re Peebles, Inc.,
23 USPQ2d 1795, 1796 (TTAB 1992), citing In re Best
Products Co., Inc., 23 USPQ2d 988, 989 (TTAB 1988).
Moreover, in the past, we have specifically found that
clothing and services related to the sale of clothing are
related for purposes of the likelihood of confusion
analysis. In re Peebles, Inc., supra (MOUNTAINHIGH for
clothing, namely coats sold in applicant’s store is likely
to cause confusion with MOUNTAIN HIGH for retail outlet
stores services for camping and mountain climbing
equipment); In re Envoys U.S.A., Inc., 221 USPQ 646 (TTAB
1984)(DOWN UNDER for an athletic shoe having a pocket
applied to its quarter portion is likely to cause confusion
with DOWNUNDER for department store services); In re
Gerhard Horn Investments, Ltd., 217 USPQ 1181 (TTAB
1983)(MARIPOSA for retail women’s clothing store services
is likely to cause confusion with MARIPOSA for woven and
knit fabrics of cotton, acrylic and polyester);
In addition, the third-party registrations and the
internet websites suggest that medical apparel and services
related to selling medical apparel may emanate from the
same source. In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1786 (TTAB 1983); In re Mucky Duck Mustard Co., Inc.,
6 UPSQ2d 1467, 1470 n.6 (TTAB 1988).
Serial No. 78498758
10
Based on the foregoing, purchasers who are familiar
with the mark A1 Scrubs used in connection with “mail order
and online retailing services featuring medical scrubs and
nursing uniforms” would, upon encountering on
“gloves, caps, gowns, masks, scrub suits, and shoe covers
for medical, surgical, and dental use,” be likely to
believe that the goods originated from the source of the
services. Accordingly, we find that the applicant’s goods
and the registrant’s services are similar.

C. The similarity of the channels of trade and classes of
consumers.

Applicant argues, in essence, the channels of trade
are different because the registrant’s services are limited
to mail order and online retail services while applicant’s
products are expected to move in “brick and mortar” stores.
Applicant’s argument is not well taken. Our
determination of the likelihood of confusion issue is based
on the identification of goods and services as they are
recited in the application and registration, and we do not
read limitations into those descriptions. See, Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 UPSQ2d
1001 (Fed. Cir. 2002); Octocom Systems Inc. v. Houston
Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed.
Serial No. 78498758
11
Cir. 1987); In re Elbaum, 211 USPQ 639 (TTAB 1981).
Applicant’s identification of goods is for “gloves, caps,
gowns, masks, scrub suits, and shoe covers for medical,
surgical, and dental use.” Since there is no restriction
as to channels of trade or classes of purchasers, it is
presumed that applicant’s medical apparel moves in all
channels of trade normal for these products, including
mail order and online retail services, and that they are
available to all medical, surgical, and dental personnel.4
Therefore, we do not consider applicant’s products to be
limited to medical apparel sold through “brick and mortar”
establishments.
In view of the foregoing, applicant’s products and
registrant’s services move in the same channels of trade
and are sold to the same class of purchasers.

D. The degree of consumer care.
Applicant argues that health care professionals
exercise a high degree of care in connection with
healthcare products. Specifically, applicant asserts that
healthcare professionals are trained to distinguish between

4 We note that in the “Sophisticated Purchaser” section of
applicant’s brief, applicant states that “Consumers of both
Applicant’s goods and Registrant’s services are health care
professionals.” (Applicant’s Brief, p. 2).
Serial No. 78498758
12
different goods and services and to select appropriate
products for particular needs. However, the goods and
services at issue involve medical apparel, not technical
medical equipment or pharmaceuticals. Being an expert or
skilled in the medical, surgical, or dental field and being
able to observe minute differences in the physical and
functional characteristics of different devices,
pharmaceuticals, or patients’ symptoms does not mean that
the person purchasing the medical apparel is equally
skilled or concerned with the trademarks that the medical
apparel is marketed under. Medtronic, Inc. v. Medical
Devices, Inc., 204 USPQ 3317, 326 (TTAB 1979); Burroughs
Wellcome Co. v. Warner-Lambert Co., 203 USPQ 201, 210 (TTAB
1979). “The fact is that this tribunal has long since
given flight to the illogical and unsupported conclusion
that physician care equals trademark care and that
physicians, because of their skill and training, are immune
from mistake.” Medtronic, Inc. v. Medical Devices, Inc.,
supra. Accordingly, whereas here, the marks are so similar
and the goods and services are so closely related, even
“sophisticated” consumers are likely to be confused.
In view of the foregoing, we find that applicant’s
mark , if used on “gloves, caps, gowns, masks, scrub
Serial No. 78498758
13
suits, and shoe covers for medical, surgical, and dental
use,” would be likely to cause confusion with A1 Scrubs
used in connection with “mail order and online retailing
services featuring medical scrubs and nursing uniforms.”
Decision: The refusal to register is affirmed.