Common Ground Health Clinic

Trademark Trial and Appeal Board

Apr 8, 2010

No. 77451560 (T.T.A.B. Apr. 8, 2010)

Mailed:
April 8, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Common Ground Health Clinic
________

Serial No. 77451560
_______

Theodore S. Owers III of Carver, Darden, Koretzky, Tessier,
Finn, Blossman & Areaux, LLC for Common Ground Health
Clinic.

Mark Rademacher, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______

Before Grendel, Cataldo, and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

On April 18, 2008, Common Ground Health Clinic applied
to register the mark COMMON GROUND HEALTH CLINIC ALGIERS
and Design, as reproduced below,

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77451560
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for goods and services ultimately identified as:
Brochures about health and wellness and
availability of resources related to the same;
Pamphlets in the field of health and wellness and
availability of resources related to the same in
International Class 16;

Golf shirts; Knit shirts; Long-sleeved shirts;
Polo shirts; Shirts; Short-sleeved or long-
sleeved t-shirts; Sweat shirts; T-shirts; Tee
shirts in International Class 25;

Educational services namely conducting workshops,
fairs, group seminars and events in the nature of
classes and demonstrations, which are open to the
community, concerning holistic medicine,
nutrition, meal preparation, lifestyle choices
and herbalism in the field of health and wellness
education; Publication of brochures in
International Class 41; and

Acupuncture; Acupuncture services; Charitable
services, namely, providing diabetic provisions
supplies to those in need; Charitable services,
namely, providing first aid supplies to those in
need; Consulting services in the field of mental
health and wellness; Counseling services in the
fields of health, nutrition and lifestyle
wellness; Health care; Health care services,
namely, disease management programs; Health care
services, namely, wellness programs; Healthcare;
Massage; Massage and therapeutic shiatsu massage;
Massages; Medical and pharmaceutical
consultation; Medical clinics; Medical
consultations; Medical counseling; Medical
information; Mental health services; Providing
assistance, fitness evaluation and consultation
to individuals to help them make health, wellness
and nutritional changes in their daily living to
improve health; Providing health information;
Providing medical information; Providing medical
information, consultancy and advisory services;
Providing wellness services, namely, personal
assessments, personalized routines, maintenance
schedules, and counseling; Psychiatric
consultation; Psychological assessment services;
Serial No. 77451560
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Psychological consultation; Stress reduction
therapy; Counseling services in the fields of
health, herbalism, and lifestyle wellness in
International Class 44.1

The terms HEALTH CLINIC and ALGIERS have been
disclaimed in the application.2
The trademark examining attorney has refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), in view of the registered mark COMMON
GROUND3 (in standard character form) for variety of
“charitable services” that included the following:
Charitable services, namely, providing education
by means of individual and group classes in the
fields of job training and life skills and
distributing course materials in connection
therewith to assist homeless and low income
persons in International Class 41; and

1 Serial No. 77451560; alleging (for all classes of goods and
services) a date of first use anywhere of July 1, 2007, and a
date of first use in commerce of September 9, 2007.
2 The application also contains the following description of
the mark: The mark consists of two circles, a smaller circle
contained within a larger one, and several images within the
circles. At the top of the mark, in the ring between the larger
and smaller circles, are the words "COMMON GROUND HEALTH CLINIC"
in a concentric crescent. A depiction of the Crescent City
Connection (a bridge which is a prominent feature of the New
Orleans sky line) spans horizontally the full length across the
middle of the small circle. A depiction of a stethoscope
encapsulates the lower half of the smaller circle. At the bottom
of the small circle and within the arc formed by the stethoscope,
are drawings of several women, children and infants of different
ethnic back grounds. At the bottom of the larger circle,
extending outward in both directions, below the stethoscope and
figures, are leaves and branches of okra and elder plants. Just
below the large circle and depiction of the plants, centered, is
the word "ALGIERS.”
3 Registration No. 3312276 issued October 16, 2007.
Serial No. 77451560
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Charitable services, namely, providing medical
evaluation and treatment to assist homeless and
low income persons; medical and psychological
counseling to assist homeless and low income
persons in International Class 44.

It is the examining attorney’s position that
applicant’s mark so resembles the registered mark that, as
used on or in connection with the identified goods and
services, it is likely to cause confusion, to cause
mistake, or to deceive.
When the refusal was made final, applicant filed this
appeal. Applicant and the examining attorney have filed
briefs. We affirm the refusal to register.
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 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (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 (CCPA 1976). See
also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
Serial No. 77451560
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We turn first to the du Pont factor of the similarity
or dissimilarity of 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.
Although the marks must be considered in their entireties,
it is well-settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). 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 the 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 (TTAB 1975).
With respect to the marks, applicant argues that the
examining attorney has failed to analyze applicant’s mark
and registrant’s mark in their entireties. Applicant
Serial No. 77451560
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contends that the examining attorney “failed to appreciate
the contribution of the extensive design feature to the
commercial impression engendered by applicant’s mark” and
“overlook[ed] the significant differences between
applicant’s composite word-design mark and the word-only
registered mark – differences that vividly and immediately
contribute to an overall visual and connotative
dissimilarity between the two marks.” Brief, p. 2.
The examining attorney, on the other hand,
acknowledges that applicant’s mark “includes a number of
elements not present in the registered mark,” but counters
that “when each element of the applied-for mark is analyzed
and given appropriate weight in the context of the whole
[mark] it is the term COMMON GROUND that drives the
commercial impression of the applied for mark.” Brief at
(unnumbered) p. 3. And that, “[e]ven if the elements [of
applicant’s mark] are weighed differently, the fact remains
that applicant has appropriated the registered mark.” Id.
at 4.
We agree with the examining attorney that when
applicant’s mark and registrant’s mark are considered in
their entireties, they are sufficiently similar that the
contemporaneous use thereof in connection with related
Serial No. 77451560
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services would likely cause confusion as to the origin or
affiliation or source of such services.
In comparing applicant’s mark and registrant’s mark,
we first note that applicant has incorporated the
registered mark, COMMON GROUND, in its entirety. In cases
such as this, a likelihood of confusion has frequently been
found. “When one incorporates the entire arbitrary mark of
another into a composite mark, the inclusion of a
significant, nonsuggestive element will not necessarily
preclude a likelihood of confusion. [Internal citations
omitted]. An inclusion of a merely suggestive or
descriptive element, of course, is of much less
significance in avoiding a likelihood of confusion.” The
Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194
USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer
design is similar the mark CONCEPT). See also Coca-Cola
Bottling Co. v. Seagram & Sons, Inc., 526 F.2d 556, 188
USPQ 105, 106 (CCPA 1975) (BENGAL LANCER and Bengal Lancer
soldier design is similar to the mark BENGAL); In re
Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA
1973) (E-CELL is similar to the mark E). Thus, the
importance of applicant's incorporation of opposer's mark
depends greatly on the degree of suggestiveness of that
mark as well as elements of the marks that are not shared.
Serial No. 77451560
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In this regard, there is no evidence to indicate that
COMMON GROUND or any similar marks is used by anyone else
or that the mark may somehow be considered weak in
connection with the recited services or goods in the
subject application and cited registration. While it
stands to reason that the term “common ground” may be
slightly suggestive in connection with any type of
community or charitable service, it is only slightly
suggestive and we find no specific meaning of the term in
connection with the identified goods and services in either
the subject application or cited registration. Even
allowing for any suggestive nature of the term COMMON
GROUND, the fact that applicant has incorporated the
registered mark greatly increases the level of similarity
between the marks.
Applicant argues that its mark vis-à-vis the
registered mark is much different from the scenarios in the
caselaw cited by the examining attorney. While applicant
is correct that each case is different and should be
decided on the individual merits, it bears repeating that a
likelihood of confusion is often found where the entirety
of one mark is incorporated within another. In addition to
the cases already cited, see In re Denisi, 225 USPQ 624,
626 (TTAB 1985)(PERRY'S PIZZA for restaurant services
Serial No. 77451560
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specializing in pizza and PERRY'S for restaurant and bar
services); Johnson Publishing Co. v. International
Development Ltd., 221 USPQ 155, 156 (TTAB 1982)(EBONY for
cosmetics and EBONY DRUM for hairdressing and conditioner);
and In re South Bend Toy Manufacturing Company, Inc., 218
USPQ 479, 480 (TTAB 1983)(LIL' LADY BUGGY for toy doll
carriages and LITTLE LADY for doll clothing).
In this case, not only does applicant’s mark
incorporate the entire registered mark, the term COMMON
GROUND is featured prominently in applicant’s mark as it
appears at the top and is the dominant element therein.
While the additional words HEALTH CLINIC and ALGIERS are
also present, the generic or geographically descriptive
nature of these disclaimed terms clearly make them
subordinate to COMMON GROUND. In other words, COMMON
GROUND will stand out in applicant’s mark as the only
literal portion which consumers will attribute any
significant source-indicating value. Consumers are also
often known to use shortened forms of names, and it is
highly likely that applicant and its services will be
referred to as “COMMON GROUND.” Cf. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA
1978) [Rich, J., concurring: “the users of language have a
Serial No. 77451560
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universal habit of shortening full names – from haste or
laziness or just economy of words”].
Again, we must, of course, consider the marks in their
entireties and we have already noted that applicant relies
heavily on the design features in its mark in arguing that
the two marks are dissimilar. However, we must also keep
in mind that the literal portions of marks, rather than
design elements, are generally regarded by consumers as the
principal source-signifying portion of the mark. See In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987) [if a
mark comprises both a word and a design, then the word is
normally accorded greater weight because it would be used
by purchasers to request or refer to the services].
In considering the design features of applicant’s
mark, we agree with the examining attorney in his statement
that “when each element of the applied-for mark is analyzed
and given appropriate weight in the context of the whole
[mark], it is the term COMMON GROUND that drives the
commercial impression of the [mark].” Brief, (unnumbered)
p. 3. In conjunction with the term HEALTH CLINIC, the
stethoscope clearly is suggestive of medical services. The
bridge design is described in the application as “a
depiction of the Crescent City Connection (a bridge which
is a prominent feature of the New Orleans sky line).”
Serial No. 77451560
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Thus, to the extent it will be recognized by consumers, it
will merely suggest a geographic area where applicant’s
services may be rendered. And, as to the illustration of
“several women, children and infants of different ethnic
back grounds,” this may reinforce the “common ground”
commercial impression. Ultimately, when viewed as a whole
and including all design portions of the mark, the
commercial impression of applicant’s mark is dominated by
the term COMMON GROUND. Because applicant incorporates the
entire registered mark which is neither descriptive or
purchasers are likely to assume that applicant’s mark may
simply be a variation of registrant’s mark, rather than
identifying a different source.
Finally, with respect to the marks, we keep in mind
the principle that “when marks would appear on virtually
identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992). And, as discussed further below, applicant’s and
registrant’s services do overlap in International Class 44.
In sum, we conclude that applicant's mark and the
registered mark are similar in terms of sound, appearance,
connotation and overall commercial impression.
Serial No. 77451560
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Accordingly, this du Pont factor weighs in favor of finding
a likelihood of confusion.
We now turn to the du Pont factor regarding the
similarity or dissimilarity of the goods and services. In
comparing the goods and services, it is not necessary that
they be identical or even competitive in order to support a
finding of likelihood of confusion. It is sufficient that
the circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
under circumstances which could give rise, because of the
marks used in connection therewith, to the mistaken belief
that the services originate from or are in some way
associated with the same source. In re International
Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Further, it is well settled that the question of likelihood
of confusion must be determined based on an analysis of the
goods and services recited in applicant’s application vis-
à-vis the goods and services recited in the cited
registration, rather than what the evidence shows the goods
or services actually are. Canadian Imperial Bank v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992);
and The Chicago Corp. v. North American Chicago Corp., 20
USPQ2d 1715 (TTAB 1991).
Serial No. 77451560
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In this case, we find that applicant’s services in
classes 41 and 44 and registrant’s services, as recited in
the respective application and registration, contain such
broad descriptions that they must be construed as
potentially very closely related and, in some respects,
overlapping. For example, registrant’s “charitable
services, namely, providing education by means of
individual and group classes in the fields of...life
skills” is broad and may be understood as encompassing or,
at least, being closely related to applicant’s “educational
services namely conducting workshops, fairs, group seminars
and events in the nature of classes and demonstrations,
which are open to the community, concerning...meal
preparation, lifestyle choices...in the field of health and
wellness education.” Moreover, applicant’s “publication of
brochures” is apparently not restricted to any subject
matter for said brochures and thus may encompass
registrant’s “distributing course materials” in connection
with the aforementioned life skills education services.
As to applicant’s and registrant’s services in
International Class 44, there is clearly some overlap.
Registrant’s services are essentially “providing medical
evaluation and treatment” as well as “psychological
counseling,” and rendering said services in a charitable
Serial No. 77451560
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setting “to assist homeless and low income persons.”
Applicant also identifies certain medical services in a
charitable setting, e.g., “charitable services, namely,
providing diabetic provisions supplies to those in need,”
in addition to a variety of other general and specific
health care services, e.g., “medical counseling...
acupuncture... providing medical information... psychiatric
consultation; psychological assessment services” that could
be rendered in a charitable setting. The identity of these
services in Class 44 is significant for purposes of a
likelihood of confusion analysis because, as mentioned, the
degree of similarity of marks necessary to find a
likelihood of confusion is decreased. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992). Of course, this is
only relevant where the services overlap or are identical,
Class 44 in this case, but we keep this proposition in
mind.
As to applicant’s class 16 goods, namely, brochures
and pamphlets in the field of “health and wellness and
availability of resources related to the same,” we find
these too are closely related to registrant’s “medical
evaluation and treatment” as well as “psychological
counseling” services. Because the subject matter of
Serial No. 77451560
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applicant’s brochures and pamphlets, i.e., “health and
wellness,” is broad and encompasses registrant’s services,
there is certainly a viable connection between the two. In
this respect, we note the examining attorney submitted
numerous third-party registrations of record showing a
single entity has registered the same mark for both Class
16 written materials in the fields of “health” or
“wellness” as well as Class 44 medical services. Applicant
has taken issue with the examining attorney’s reliance on
the third-party registrations for purposes of showing the
relatedness of the respective goods and services. While
these registrations are not evidence that the marks are in
use or that consumers are familiar with them, they do
suggest that the listed goods and services are of a type
which may emanate from a single source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). The
registrations are probative in that they suggest that
consumers are likely to believe the goods and services,
being sold or offered under a similar mark, are being
offered by the same entity.
Finally, as to applicant's clothing, consisting of a
variety of types of shirts, we find no real relationship
between these goods and registrant's services. The
Serial No. 77451560
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examining attorney argues that clothing is “often marketed
by charitable or healthcare organizations” and that
applicant’s shirts “serve primarily to raise the visibility
of the service provider.” He contends that use of the mark
on apparel “may be thought of as a trademark and service
mark for the underlying goods and services.” Brief,
(unnumbered) p. 6. He likens this case to other situations
where the Board held a likelihood of confusion existed
based, in part, on certain goods being considered
“collateral products” used in the merchadising of other
goods or services.
We cannot make a finding consistent with the examining
attorney’s arguments regarding any relationship between
applicant’s shirts and registrant’s services. That is,
there is no evidence to support his assertion that it is
commonplace for companies to render services such as those
identified in the registration and also offer shirts, as
collateral merchandise, bearing the same trademark. It is
true that the Board has taken notice before regarding the
use of a mark on collateral merchandise in the context of
determining the relatedness of goods and services. See,
e.g., Turner Entertainment Co. v. Nelson, 38 USPQ2d 1942,
1944 (TTAB 1996)(“It is common knowledge … that video
games, t-shirts, beach towels, caps and other logo-
Serial No. 77451560
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imprinted products are used as promotional items for a
diverse range of goods and services…”). However, in this
case, the Board does not take notice that it is common
knowledge that consumers are accustomed to seeing the same
mark used in connection with services of the type(s)
described in the registration as well as being used on
shirts, as collateral merchandise or otherwise.
In sum, we find applicant’s goods in Class 16 and all
of its services are related to registrant’s services; and
with respect to certain services in Class 44, they overlap
with registrant’s services. On the other hand, with
respect to applicant’s goods in Class 25, we have no
evidence to make a finding that they are related to
registrant’s services. Accordingly, this du Pont factor
weighs in favor of finding a likelihood of confusion for
Classes 16, 41, and 44, but does not as pertaining to Class
25.
As to the channels of trade and classes of purchasers,
we initially note that registrant’s services are prefaced
as “charitable services” and are directed “to assist
homeless and low income persons.” Based on this language,
applicant argues that the respective trade channels and
classes of purchasers are different. We disagree with this
contention. First, applicant’s services and goods are not
Serial No. 77451560
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limited and we must assume they will be offered in all of
the normal trade channels and classes of purchasers for
such goods and services. This would include applicant
advertising and rendering its services in similar settings
and to similar persons as those to whom registrant’s
services are rendered. Indeed, with respect to the
overlapping services (detailed above), we must presume that
such services would be offered in some of the same channels
of trade, such as by charitable organizations, and to some
of the same classes of consumers, such as low-income and
homeless persons. In re Elbaum, 211 USPQ 639, 640 (TTAB
1981). In other words, applicant’s services are broad
enough that they certainly can be rendered in a charitable
setting and offered to all individuals, including homeless
and low income persons. Indeed, the recitations of
services in the subject application seem to corroborate
this; to wit, “[c]haritable services, namely, providing
diabetic provisions supplies to those in need.” And,
applicant’s education services are “open to the community.”
Accordingly, the du Pont factors involving the trade
channels and classes of purchases, at least with respect to
the services of applicant and the registrant, weigh in
favor of finding a likelihood of confusion.
Serial No. 77451560
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We have given consideration to all of the du Pont
factors for which we have evidence or relevant argument and
conclude that persons familiar with the registered mark
COMMON GROUND for the services recited in the cited
registration are likely to believe, upon encountering the
mark COMMON GROUND HEALTH CLINIC ALGIERS and design for the
goods (in Class 16 only) and services (in Classes 41 and
44) recited in the subject application, that the respective
goods and services emanate from or are associated with or
sponsored by the same source. However, on this record, we
cannot find that there is a likelihood of confusion between
applicant’s mark, for use on the identified goods in Class
25, and registrant’s mark in connection with its services.
As discussed herein, the fact that the applied-for
mark incorporates the entire distinctive mark in the cited
registration played a significant role in our analysis.
And, even if we had any doubts as to the likelihood of
confusion, we would resolve them, as we must, in
registrant's favor. In re Hyper Shoppes (Ohio), Inc., 837
F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988); and In re
Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-
Colombes, 487 F.2d 918, 179 USPQ 729, 729-30 (CCPA 1973).
Decision: The refusal to register applicant’s mark is
affirmed, in part, as to the Classes 16, 41 and 44 goods
Serial No. 77451560
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and services in the application. The refusal to register
is reversed, in part, as to the Class 25 goods in the
application.