Cardeologie, Inc.

Trademark Trial and Appeal Board

Oct 16, 2014

No. 85826725 (T.T.A.B. Oct. 16, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: October 16, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
________

In re Cardeologie, Inc.
________

Serial No. 85826725
_______

Natah C. Belzer of Belzer PC for Cardeologie, Inc.

Nakia D. Henry, Trademark Examining Attorney, Law Office 117 (Hellen Bryan-
Johnson, Managing Attorney).
_______

Before Quinn, Shaw, and Gorowitz,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Cardeologie, Inc. (“Applicant”) filed an application to register the mark
CARDEOLOGIE (in standard characters) for “greeting cards, invitation cards,
notecards, postcards” in International Class 16; and “retail store services featuring
greeting cards, notecards, invitation cards, postcards and gift items” in
International Class 35.1
The Trademark Examining Attorney refused registration under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark,

1 Application Serial No. 85826725, filed January 18, 2013 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging first use anywhere and first use in commerce
on November 2, 2012.
Application Serial No. 85826725

2

when used in connection with Applicant’s goods and services, so resembles the
previously registered mark shown below

(in standard character form) for “announcement cards; blank cards; blank note
cards; cards bearing universal greetings; cards, namely, greeting cards, holiday
cards, invitation cards, inspirational greeting cards, place cards, and blank cards;
paper containers for cards, namely, paper boxes and paper mache boxes; Christmas
cards; correspondence cards; gift cards; greeting cards; holders specially adapted for
holding greeting cards; holiday cards; motivational cards; note cards; occasion cards;
packaging, namely blister cards; paper boxes for storing greeting cards; place cards;
social note cards” in International Class 16,2 as to be likely to cause confusion.
When the refusal was made final, Applicant appealed. Applicant and the
Examining Attorney filed briefs.
Applicant argues that the marks are distinguishable, that Applicant’s
services are not related to Registrant’s goods, and that the mark in the cited
registration is weak and entitled to a narrow scope of protection. In support of its
arguments, Applicant submitted a printout of a TESS (Trademark Electronic
Search System) report (Exhibit A), a listing from Wikipedia (Exhibit B), a
translation retrieved from Google’s website (Exhibit C), a listing from Wiktionary
(Exhibit D), and a copy of an unpublished Board decision (Exhibit E).

2 Registration No. 3463847, issued July 8, 2008; Section 8 affidavit accepted.
Application Serial No. 85826725

3

The Examining Attorney maintains that the marks are similar, and that the
goods are identical in part, and that the goods and services are related. In support
of the refusal the Examining Attorney introduced dictionary definitions,3 and
excerpts of a third-party’s website.
Our determination under Section 2(d) is based on an analysis of all of the
facts in evidence that are relevant to the factors bearing on the likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976).
We initially consider the second du Pont factor regarding the
similarity/dissimilarity between Applicant’s goods and services and Registrant’s
goods. It is well settled that the goods and/or services of Registrant and Applicant
need not be identical or competitive, or even be offered through the same channels
of trade, to support a holding of likelihood of confusion. It is sufficient that the
respective goods and/or services of Registrant and Applicant are related in some
manner, and/or that the conditions and activities surrounding the marketing of the

3 One of these definitions is attached to the Examining Attorney’s brief, and of which the
Examining Attorney requested the Board to take judicial notice. The Board may take
judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food
Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983),
including online dictionaries that exist in printed format or have regular fixed editions. In
re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). See In re Thomas White Int’l Ltd.,
106 USPQ2d 1158, 1160 n.1 (TTAB 2013).

Application Serial No. 85826725

4

goods and/or services are such that they would or could be encountered by the same
persons under circumstances that could, because of the similarity of the marks, give
rise to the mistaken belief that they originate from the same source. See Hilson
Research, Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB
1993). The issue here, of course, is not whether purchasers would confuse the goods
and/or services, but rather whether there is a likelihood of confusion as to the
source of these goods and/or services. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434,
1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830 (TTAB 1984). Likelihood of
confusion must be found if there is likely to be confusion with respect to any item in
a class that comes within the identification of goods and/or services in the
application and cited registration. See Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v.
TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007).
Applicant’s goods include “greeting cards,” “invitation cards,” and “note
cards.” Each of these items also is listed in Registrant’s identification of goods and,
thus, the goods are identical in part.
Applicant’s retail store services feature these same goods, namely greeting
cards, invitation cards and note cards; as just noted, these goods are identical to the
ones identified in the cited registration. Accordingly, Registrant’s goods and
Applicant’s retail services featuring the identical goods are related for purposes of
the likelihood of confusion analysis. It is well recognized that confusion may be
likely to occur from the use of the same or similar marks for goods, on the one hand,
Application Serial No. 85826725

5

and for services involving those goods, on the other. See, e.g., In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (holding BIGG’S
(stylized) for retail general merchandise store services and BIGGS and design for
furniture likely to cause confusion); In re H.J. Seiler Co., 289 F.2d 674, 129 USPQ
347 (CCPA 1961) (holding SEILER’s for catering services and SEILER’S for smoked
and cured meats likely to cause confusion); In re United Serv. Distribs., Inc., 229
USPQ 237 (TTAB 1986) (holding mark consisting of a design featuring silhouettes
of a man and woman used in connection with distributorship services in the field of
health and beauty aids and mark consisting of a design featuring silhouettes of a
man and woman used in connection with skin cream likely to cause confusion); In re
Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (holding 21 CLUB for
various items of clothing and THE “21” CLUB (stylized) for restaurant services
likely to cause confusion); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985)
(holding CAREER IMAGE (stylized) for retail women’s clothing store services and
CREST CAREER IMAGES (stylized) for uniforms likely to cause confusion). Indeed,
Applicant itself offers both greeting cards and retail store services featuring
greeting cards under the same mark.
Insofar as the trade channels and purchasers are concerned, because the
goods identified in the application and the cited registration are in part legally
identical, we must presume that the channels of trade and classes of purchasers are
the same. See In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723
(CCPA 1968) (where there are legally identical goods, the channels of trade and
Application Serial No. 85826725

6

classes of purchasers are considered to be the same); American Lebanese Syrian
Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022,
1028 (TTAB 2011). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of
trade and classes of consumers, the Board was entitled to rely on this legal
presumption in determining likelihood of confusion). The goods are likely to be sold
through the same trade channels (e.g., greeting card stores, stationery stores, online
retailers of cards and stationery) to the same classes of purchasers (e.g., ordinary
consumers).
The similarity between Applicant’s goods and services, and Registrant’s
goods, the identical or otherwise similar trade channels, and the overlap in
purchasers are factors that weigh in favor of a finding of likelihood of confusion.
With respect to the marks, we must compare the marks in their entireties as
to appearance, sound, connotation and commercial impression to determine the
similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005), quoting In re E. I. du Pont de Nemours & Co., 177 USPQ at 567. “The
proper test is not a side-by-side comparison of the marks, but instead ‘whether the
marks are sufficiently similar in terms of their commercial impression’ such that
persons who encounter the marks would be likely to assume a connection between
the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). The focus is on the
Application Serial No. 85826725

7

recollection of the average purchaser, who normally retains a general rather than a
specific impression of trademarks. See Inter IKEA Sys. B.V. v. Akea, LLC, 110
USPQ2d 1734, 1740 (TTAB 2014); Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106 (TTAB 1975). In comparing the marks when used in connection with
Applicant’s and Registrant’s goods, we are mindful that where, as here, the goods
are in part legally identical, the degree of similarity between the marks necessary to
find likelihood of confusion need not be as great as where there is a recognizable
disparity between the goods. Coach Servs., Inc. v. Triumph Learning LLC, 101
USPQ2d at 1721; Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85
USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v. Ing-
Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). This legal maxim does not apply,
of course, with respect to a comparison between the marks for Applicant’s services
and Registrant’s goods.
Applicant points out in exacting detail the differences between the marks.
Although there are specific differences between the marks, Applicant’s mark
CARDEOLOGIE and Registrant’s mark CARDologists are similar in appearance
and sound. Prospective purchasers are likely to perceive the marks as misspelled
plays on the commonly recognized words “cardiology” and “cardiologists,”
respectively. The word “cardiology” means “the medical study of the structure,
function, and disorders of the heart.” The word “cardiologist” is defined as “a doctor
who studies the heart and deals with the diseases that affect it.”
Application Serial No. 85826725

8

(). The suffix “-ology” means “a combining form [suffix] used in
the names of sciences or bodies of knowledge,” and the suffix “-logist” means “a
person who studies or is an expert in the related ‘-logy.’” ( and
). In addition, the respective marks playfully suggest the study of
cards, and one whose specialty is the study of cards, whether greeting cards,
notecards, invitation cards or otherwise; stated differently, both suggest an
expertise in such cards. Thus, the marks likewise are similar in meaning when used
in connection with cards or retail store services featuring cards. Given all of these
similarities, the marks engender similar overall commercial impressions, especially
when considered in the context of identical goods and related goods and services.
The similarity between the marks is a factor that weighs in favor of a finding
of likelihood of confusion.
In connection with the sixth du Pont factor involving the number and nature
of similar marks in use on similar goods and/or services, Applicant argues that the
cited mark is weak and entitled to only a narrow scope of protection, relying on a
TESS printout of 285 third-party registrations of marks that include “CARD” for
greeting cards. During prosecution, Applicant did not furnish copies of any of the
listed registrations. The Examining Attorney waited until the brief to object “to this
evidence because the proposed registrations were incorrectly attached.” (6
TTABVue 13).
To make a third-party registration of record, a copy of the registration, either
a copy of the paper USPTO record, or a copy taken from the electronic records of the
Application Serial No. 85826725

9

Office, should be submitted during prosecution of the application. In re Jump
Designs LLC, 80 USPQ2d 1370, 1372-73 (TTAB 2006). Thus, the mere submission of
the TESS search results listing the third-party registrations, without copies of the
registrations, is insufficient to make the registrations of record. Inasmuch as the
Examining Attorney did not advise Applicant that the TESS search report is
insufficient to make the registrations of record at a point when Applicant could have
corrected the error, the Examining Attorney is deemed to have waived any objection
to consideration of the list itself, for whatever probative value it may have. See In re
City of Houston, 101 USPQ2d 1534, 1536 (TTAB 2012), aff’d, 731 F.3d 1326, 108
USPQ2d 1226 (Fed. Cir. 2013). However, the mere listing of the registrations in the
TESS search report, showing only the registration number, registered mark and
whether the registration is live/dead, is entitled to very little probative weight. See
In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1264 n.6 (TTAB 2011).
Even if the registrations themselves had been submitted, the evidence would
be of limited probative value to support Applicant’s position because “[t]he existence
of [third-party] registrations is not evidence of what happens in the market place or
that consumers are familiar with them nor should the existence on the register of
confusingly similar marks aid an applicant to register another likely to cause
confusion, mistake or to deceive.” AMF Inc. v. American Leisure Products, Inc., 474
F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); In re Max Capital Group Ltd., 93
USPQ2d 1243, 1248 (TTAB 2010). Even a weak mark is entitled to protection
against the registration of a similar mark for related goods and/or services.
Application Serial No. 85826725

10

Notwithstanding the very limited probative value of the TESS printout, we
acknowledge that the “CARD” portion of Applicant’s and Registrant’s marks when
considered by itself is descriptive, a fact borne out by the printout and the common
meaning of the word “card.” But when “CARD” is combined with the “-eologie” and
“-ologists” portions of the respective marks, the entire marks are suggestive and, as
we indicated above, convey the same or very similar suggestion. See In re Toshiba
Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009).
We have carefully considered all of the evidence made of record pertaining to
the issue of likelihood of confusion, as well as all of the arguments related thereto,
including any evidence and arguments not specifically discussed in this opinion. We
conclude that purchasers familiar with Registrant’s “announcement cards; blank
cards; blank note cards; cards bearing universal greetings; cards, namely, greeting
cards, holiday cards, invitation cards, inspirational greeting cards, place cards, and
blank cards; Christmas cards; correspondence cards; greeting cards; holiday cards;
motivational cards; note cards; occasion cards” sold under the mark CARDologists
would be likely to mistakenly believe, upon encountering Applicant’s mark
CARDEOLOGIE for “greeting cards, invitation cards, notecards, postcards” and
“retail store services featuring greeting cards, notecards, invitation cards, postcards
and gift items,” that the goods and/or services originate from or are associated with
or sponsored by the same entity.
Decision: The refusal to register is affirmed.