Cerner Corp.

Trademark Trial and Appeal Board

Feb 27, 2007

No. 78311364 (T.T.A.B. Feb. 27, 2007)

Mailed: February 27, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Cerner Corp.
________

Serial No. 78311364
_______

Lisa R. Brooks-Hammond of Shook, Hardy & Bacon L.L.P. for
Cerner Corp.

Mary Munson, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).1
_______

Before Grendel, Holtzman and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Cerner Corp. to register
the mark POWERSTART in typed or standard character form on
the Principal Register for the following goods, as amended:
“electronic database in the field of healthcare recorded on
computer media, namely a database of clinical, financial,

1 The involved application originally was examined by another
examining attorney, but was reassigned to the above named
examining attorney to prepare the appeal brief.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78311364
2
operational and administrative data, content and
information” in International Class 9.2
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as intended to be used in connection with
its goods, so resembles the mark POWERSTART PRESS,
previously registered on the Principal Register in typed or
standard character form for “books relating to education,
nature, history, sports, social studies, guidance and
safety, cultural diversity, science and health,
biographies, and educational manipulatables” in
International Class 16,3 as to be likely to cause confusion,
mistake or deception.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs on
the issue under appeal.
Applicant argues that the term PRESS in registrant’s
POWERSTART PRESS mark “is an important part of the overall
appearance, connotation and commercial impression of
registrant’s mark” (brief, p. 4); and that while

2 Application Serial No. 78311364 was filed October 9, 2003,
based on applicant’s assertion of its bona fide intent to use the
mark in commerce. Applicant claims ownership of Registration
Nos. 1895933, 2285661, 2702211, 2706640 and 2744586.

3 Registration No. 2945034 issued April 26, 2005 with a
disclaimer of “PRESS” apart from the mark as shown.
Ser No. 78311364
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applicant’s POWERSTART mark is “somewhat similar” (Id.) to
registrant’s mark in appearance and sound, the marks convey
different commercial impressions. Applicant also argues
that its POWERSTART mark is one of a family of POWER
formative marks owned by applicant, all of which feature
POWER as a prefix, modified by an additional term or terms.
Applicant further contends that its goods are computer
software in the nature of a database in the enumerated
fields whereas registrant’s goods are “traditional books on
a variety of subjects distributed by a general publishing
house” (brief. P. 5); that, as a result, applicant’s goods
are unrelated to those of registrant; that “the mere fact
that goods are both loosely related to healthcare and the
vast medical field has been held not to be sufficient to
demonstrate a likelihood of confusion” (Id.); and that the
third-party registrations relied upon by the examining
attorney to establish a relation between applicant’s goods
and those of registrant is not persuasive because the
examining attorney “has not provided evidence that supports
his contention that a publisher of books for the general
public, such as [registrant], is likely to develop high-end
software for the healthcare industry, such as Applicant’s”
(brief, p. 6). Applicant asserts in addition that its
goods are marketed to healthcare executives and high-level
Ser No. 78311364
4
government officials; that registrant’s goods are marketed
to the general public through normal distribution channels
for book publishing; that, as a result, applicant’s goods
are marketed in a manner different from those of
registrant; and that the trade channels for its goods thus
differ from those of registrant’s goods. Applicant argues
moreover that its goods are relatively expensive; that its
consumers are highly sophisticated and well-educated
professionals; and that, as a result, the purchasers of its
goods are careful and exercise great care in their
selection thereof.
The examining attorney argues that applicant’s
POWERSTART mark is identical to the dominant feature in
that of registrant; and that the presence of PRESS in
registrant’s mark is insufficient to distinguish it from
applicant’s mark. The examining attorney further argues
that the existence of an asserted family of POWER marks
owned by applicant “is more likely to add to the likelihood
of confusion than to distinguish the marks” (brief,
unnumbered p. 4). The examining attorney argues in
addition that third-party registrations show the same marks
used to indicate the source of both applicant’s and
registrant’s goods; that the identification of applicant’s
and registrant’s goods contain no restrictions as to their
Ser No. 78311364
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channels of trade; and that, as a result, both applicant’s
and registrant’s goods are presumed to move in all normal
channels of trade therefor. Finally, the examining
attorney argues that other factors relevant to likelihood
of confusion cannot be considered because there is no
evidence as to those factors in the record.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in 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 Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, however, 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, 27 (CCPA
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
We first consider the similarity of the marks. In
this case, applicant’s mark, POWERSTART, is identical to
the distinctive portion the cited mark, POWERSTART PRESS.
As for the presence of PRESS in registrant’s mark, this
term, which has been disclaimed, clearly is descriptive of
Ser No. 78311364
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the identified books and other publications. See In re
Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213 (TTAB
2000). It is a well-established principle that, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has
been given to a particular feature of a mark, provided the
ultimate conclusion rests on a consideration of the marks
in their entireties. See In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In view of
the descriptive nature of the word PRESS, it has little, if
any, source-indicating significance, and is entitled to
less weight in the likelihood of confusion analysis.
Consumers who are familiar with the mark, POWERSTART PRESS,
used on registrant’s books and various publications in
fields that include health, who then see the mark
POWERSTART intended to be used on electronic databases
recorded on computer media in the field of healthcare, are
likely to assume that the owner of the POWERSTART PRESS
mark has simply deleted PRESS when using the mark on
computer media. In other words, consumers are likely to
view both marks as variations of each other, but both as
indicating a single source. Thus, despite the fact that
the registrant’s mark includes the word PRESS, the marks
Ser No. 78311364
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POWERSTART and POWERSTART PRESS are highly similar in
appearance, pronunciation and connotation, and convey very
similar commercial impressions. Accordingly, this du Pont
factor favors a finding of likelihood of confusion.
In coming to our determination with regard to the
similarities between the marks, we note applicant’s claim
of ownership of several registrations in the challenged
application, all assertedly for marks containing POWER as a
prefix and its argument that confusion in this case is
unlikely because it owns a family of POWER formative marks.
However, applicant’s ownership of a family of POWER
formative marks, even if proven, is irrelevant. We must
decide the issue of likelihood of confusion based upon
applicant’s POWERSTART mark in its application at issue
herein. See In re Lar Mor International, Inc., 221 USPQ
180 (TTAB 1983); In re U.S. Plywood-Champion Papers, Inc.,
175 USPQ 445 (TTAB 1972); cf. Baroid Drilling Fluids, Inc.
v. Sun Drilling Products, 24 USPQ2d 1048 (TTAB 1992).
Thus, applicant’s claim of a family of marks is unavailing
in this case.
We turn now to our consideration of the identified
goods, noting that it is not necessary that the goods at
issue be similar or competitive, or even that they move in
the same channels of trade, to support a holding of
Ser No. 78311364
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likelihood of confusion. It is sufficient instead that the
respective goods are related in some manner, and/or that
the conditions and activities surrounding the marketing of
the goods 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 producer. See In
re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In this case, applicant’s databases in the field of
healthcare are related as identified to registrant’s books
and other publications in various fields including health
in that they share common subject matter. In addition, the
examining attorney has made of record a number of use-based
third-party registrations which show that various entities
have adopted a single mark for goods that are identified in
both applicant’s application and the cited registration.
See, for example:
Registration No. 2446871 for, inter alia,
electronic database of medical related
information, including symptoms, diagnosis,
treatments, home care and preventative care;
educational publications, namely, books,
pamphlets, brochures and periodicals in the
fields of health education, health promotion,
disease management, health care, self care and
health related topics;

Ser No. 78311364
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Registration No. 2813663 for, inter alia,
electronic database of medical related
information, concerning symptoms, diagnosis,
treatments, home care and preventative care;
health education printed materials, comprising
books, on self-care and health related topics;

Registration No. 1936354 for, inter alia,
computer software database containing payor and
provider data of medical, dental, anesthesia and
workers compensation prices, and of billing and
payment rules, and of treatment guidelines and
parameters, for use in the healthcare industry;
books, pamphlets, manuals, and news letters
relating to the healthcare industry;

Registration No. 2625474 for, inter alia,
databases reported [sic] on computer media
containing information relating to the management
and operation of health care provider
organizations; publications, namely, newsletters,
magazines and books containing information
relating to the management and operation of
health care organizations;

Registration No. 1904220 for, inter alia, optical
disks featuring indexes of nursing literature,
medical literature and health literature and
search tools and aids for use with such indexes;
data books, namely indexes of nursing literature,
medical literature and health literature and
subject matter heading lists and database search
guides; and

Registration No. 2834724 for, inter alia,
prerecorded videotapes, audio cassettes and
compact discs in the fields of health, nutrition,
exercise, healthy lifestyles, dietary
supplementation, diet, weight loss and weight
management, behavioral modification, emotional
well-being, and care of the skin, hair and nails;
Newsletters, brochures, a series of non-fiction
books and informational sheets in the fields of
health, nutrition, exercise, healthy lifestyles,
fitness, nutrition, over-the-counter
pharmaceuticals, dietary supplementation, diet,
weight loss and weight management, behavioral
Ser No. 78311364
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modification, emotional well-being, and care of
the skin, hair and nails.

Applicant’s assertions to the contrary notwithstanding,
third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993). The identification of applicant’s and registrant’s
goods as well as the foregoing evidence demonstrate the
related nature of the goods at issue, and this du Pont
factor also favors a finding of likelihood of confusion.
Furthermore, we are not persuaded by applicant’s
arguments that its goods travel in channels of trade that
are separate and distinct from those in which registrant’s
goods may be encountered. It is settled that in making our
determination regarding the relatedness of the parties’
goods, we must look to the goods as identified in the
involved application and cited registration. See Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority
is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
Ser No. 78311364
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regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed.”) See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods.”) As identified, neither
applicant’s nor registrant’s goods contain any limitations
as to trade channels or intended consumers. Accordingly,
both applicant’s and registrant’s goods are presumed to
move in all normal channels of trade and be available to
all classes of potential consumers, including consumers of
each other’s goods. See In re Elbaum, 211 USPQ 639, 640
(TTAB 1981).
The final du Pont factor discussed by applicant is
that of the conditions of sale. Applicant asserts that its
goods are comparatively expensive, and would be purchased
by careful and sophisticated users. However, there is no
evidence that either applicant’s or registrant’s goods
would be purchased only by highly sophisticated persons.
Further, sophisticated purchasers are not necessarily
knowledgeable in the field of trademarks or immune from
source confusion. See In re Decombe, 9 USPQ2d 1812, 1814-
Ser No. 78311364
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1815 (TTAB 1988). Moreover, in view of the third-party
registrations which are evidence that both applicant’s and
registrant’s goods are of a type which may emanate from a
single source, prospective purchasers may mistakenly
believe that these goods could emanate from the same
source. In addition, even if some degree of care were
exhibited in making the purchasing decision, the marks
POWERSTART PRESS and POWERSTART are so similar that even
careful purchasers are likely to assume that the marks
identify goods emanating from a single source.
In summary, weighing all of the evidence of record as
it pertains to the relevant du Pont factors, we find that a
likelihood of confusion exists. Moreover, to the extent
that any of the points raised by applicant raise a doubt
about likelihood of confusion, that doubt is required to be
resolved in favor of the prior registrant. See In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed.
Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 165, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal of registration is affirmed.