Daniel A. Teet, M.D., P.C.

Trademark Trial and Appeal Board

Nov 30, 2000

No. 75296222 (T.T.A.B. Nov. 30, 2000)

Hearing: May 9, 2000 Paper No. 16
TEH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Daniel A. Teet, M.D., P.C.
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Serial No. 75/296,222
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Joseph Scafetta, Jr. for Daniel A. Teet, M.D, P.C.
David H. Stine, Trademark Examining Attorney, Law Office 114
(Conrad Wong, Acting Managing Attorney).
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Before Cissel, Hohein and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
Daniel A. Teet, M.D., P.C. has appealed from the final
refusal of the Trademark Examining Attorney to register the mark
RENAISSANCE COSMETIC SURGERY CENTER for "providing cosmetic and
reconstructive surgery."1

1 Application Serial No. 75/296,222, filed May 4, 1997 alleging first
use on January 1, 1997 and first use in commerce on January 17, 1997.
The phrase COSMETIC SURGERY CENTER has been disclaimed.
Ser. No. 75/296,222
2
Registration has been refused under Section 2(d) of the
Trademark Act on the ground that applicant's mark so resembles
the marks shown below, all owned by the same registrant and all
for "retirement home and health care services," as to be likely
to cause confusion:
Registration No. 1,643,099;2
RENAISSANCE
Registration No. 1,703,974;3
and Registration No. 1,712,507.4

2 Issued April 3, 1991; combined Sections 8 and 15 filed.
3 Issued July 28, 1992; combined Sections 8 and 15 filed.
4 Issued September 1, 1992; combined Sections 8 and 15 filed.
Ser. No. 75/296,222
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When the refusal was made final, applicant appealed. Both
applicant and the Examining Attorney filed briefs and an oral
hearing was held.
Here, as in any likelihood of confusion analysis, we look to
the factors set forth in In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973), giving particular attention
to the factors most relevant to the case at hand, including the
similarity of the marks and the relatedness of the goods or
services.
Turning first to the marks, the Examining Attorney argues
that the marks create similar commercial impressions, all of the
marks being dominated by the term RENAISSANCE. Applicant's sole
argument on this issue is that purchasers would not perceive that
the marks create similar commercial impressions.
Applicant's and registrant's marks are similar in sound,
appearance and commercial impression, the strongest impression of
each mark being conveyed primarily by the single word
RENAISSANCE. In fact, one of the cited registrations consists
solely of the word RENAISSANCE. While marks must be compared in
their entireties, there is nothing improper in giving more or
less weight to certain features of the marks as being more
dominant or otherwise significant, and therefore to give those
features greater weight. See In re National Data Corp., 753 F.2d
1056, 224 USPQ 749 (Fed. Cir. 1985). In this case, applicant's
Ser. No. 75/296,222
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disclaimed wording, COSMETIC SURGERY CENTER, while not ignored in
the analysis, is highly descriptive of applicant's services and
therefore of little significance as an indication of source.
See, e.g., Hilson Research Inc. v. Society For Human Resource
Management, 27 USPQ2d 1423 (TTAB 1993). In addition, design
elements, such as that appearing in one of the cited marks, are
generally less important than the word portion of the mark in
creating an impression. See In re Appetito Provisions Co., 3
USPQ2d 1553 (TTAB 1987). Here, it is the word RENAISSANCE in
applicant's and registrant's marks which is most likely to be
remembered and relied upon by purchasers in calling for the
respective services.
Moreover, RENAISSANCE appears to be a unique term in the
health care field and thus more likely to create confusion when
used in both applicant's and registrant's marks. See, e.g.,
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698 (Fed. Cir. 1992). We have no evidence that
RENAISSANCE is commonly used in the health care or related
fields, or any other evidence in the record to suggest that
RENAISSANCE is weak, or entitled to anything less than a broad
scope of protection.
We turn then to the services. The Examining Attorney argues
in this regard that applicant's services are a specialty within
the general health care field and must be considered, at least in
Ser. No. 75/296,222
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part, legally identical to the broad unrestricted health care
services portion of registrant's identified services.
Applicant maintains that the health care services of
registrant "are related" to its retirement homes and not separate
therefrom, arguing that applicant does not perform general health
care services or run a retirement home and that registrant's
retirement home and its "related" health care services are not
broad enough to include cosmetic and reconstructive surgery.
Applicant contends that registrant's services are offered in "an
area completely dissimilar than that of the Applicant," stating
that there are no cosmetic and reconstructive surgeons in
registrant's retirement facility. It is applicant's position
that the elderly residents of a retirement home featuring health
care services are not "the same middle-aged consumers" who would
seek cosmetic and reconstructive surgery and that an ordinary
consumer would not go to a retirement home to have cosmetic
surgery and would not go to a cosmetic surgery center "for
information about retirement homes." Applicant believes that
purchasers of both types of services are sufficiently
sophisticated to recognize the difference between the sources of
the services.
In response, the Examining Attorney points out that
applicant is not permitted to narrow or restrict the scope of the
services by claiming, for example, that registrant only provides
Ser. No. 75/296,222
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health care services which are "related" to its retirement home
services when there are no restrictions in the identification of
services in the registrations as to channels of trade or classes
of purchasers.
Notwithstanding applicant's arguments, we find that
applicant's cosmetic and reconstructive services, on the one
hand, and registrant's health care services, on the other, are
related services which, if provided under similar marks, would
result in likelihood of confusion. Applicant's specialized
cosmetic and reconstructive surgery must be considered to be
encompassed by registrant's broadly described health care
services. By its arguments that the services are not related,
are not in same channels of trade, and are not directed to the
same purchasers, applicant has read impermissible limitations
into the registration. Whether registrant in fact offers
cosmetic and reconstructive surgery as part of its general health
care services is not relevant. Nor does it matter whether or not
registrant's health care services are only offered in connection
with its retirement home services. As our primary reviewing
court has often stated, the question of likelihood of confusion
is determined on the basis of the identification of services set
forth in the registration, without limitations or restrictions as
to the actual nature of the services, their channels of trade
and/or classes of purchasers that are not reflected therein. See
Ser. No. 75/296,222
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J & J Snack Foods Corp. v. McDonalds' Corp., 932 F.2d 1460, 1464,
18 USPQ2d 1889, 1892 (Fed. Cir. 1991); Octocom Systems Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 942, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990); and CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198 (Fed. Cir. 1983).
In the absence of any specific restrictions in the
application or registration as to the channels of trade or
classes of purchasers, it must be presumed that applicant's
cosmetic and reconstructive surgery is offered in the same
channels of trade as registrant's health care services, even at
the same medical facilities, and that the services are offered to
all potential customers, including registrant's health care
customers.
Applicant's claim that the users of these services are
sophisticated is unsupported by the record. We can assume that
applicant's surgical procedures are costly and that persons who
are interested in or in need of this type of surgery may be
careful in their selection of a medical facility and the surgeon
to perform the surgery. However, there is no evidence that such
individuals are sophisticated in these matters, and indeed, the
ordinary purchaser of these services would probably not be.
Moreover, even if purchasers were established to be sophisticated
with respect to the services, we would have no basis upon which
Ser. No. 75/296,222
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to conclude that such sophistication would extend to the marks
used in connection with them.5
Contrary to the contention of our dissenting colleague, we
are not proposing to "ignore" the term "retirement home" in the
registration's identification of services. The fact is that the
registrant has listed both retirement home "and" health care
services, not "retirement home services and health care services
rendered in retirement homes to residents thereof," as applicant
and our dissenting colleague would have it. It is simply
contrary to accepted rules of grammatical interpretation to
construe the plain language in the registration in the distorted
way the dissent suggests.
We conclude that purchasers familiar with registrant's
health care services provided under its marks including the mark
RENAISSANCE, would be likely to believe, upon encountering
applicant's RENAISSANCE COSMETIC SURGERY CENTER for cosmetic and
reconstructive surgery, that the services originated with or are
somehow associated with or sponsored by the same entity.

5 Finally, applicant has submitted no evidence in support of its claim
that there has been no actual confusion and that claim has therefore
Ser. No. 75/296,222
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Decision: The refusal to register is affirmed.
R. F. Cissel
T. E. Holtzman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board

been given no consideration. In any event, it is unnecessary to show
actual confusion in establishing likelihood of confusion.
Ser. No. 75/296,222
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Hohein, Administrative Trademark Judge, dissenting:
I respectfully dissent since, while I concur with the
majority that, for the reasons stated, the marks at issue are
sufficiently similar, I disagree that the respective services, as
identified, are so closely related that confusion as to their
origin or affiliation is likely. In particular, it is worth
noting that the majority, like the Examining Attorney, makes no
contention that applicant's services of "providing cosmetic and
reconstructive surgery" are in any way related to registrant's
"retirement home" services. Instead, inasmuch as registrant's
services are identified in their entirety as "retirement home and
health care services," both the majority and the Examining
Attorney focus their attention on the language "health care
services" in order to support their conclusion that confusion is
likely. In this regard, the majority "find[s] that applicant's
cosmetic and reconstructive services, on the one hand, and
registrant's health care services, on the other, are related
services" because "[a]pplicant's specialized cosmetic and
reconstructive surgery must be considered to be encompassed by
registrant's broadly described health care services."
It is of course well settled that the issue of likelihood of
confusion must be determined on the basis of the goods as they
are set forth in the involved application and cited
Ser. No. 75/296,222
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registrations. See, e.g., CBS Inc. v. Morrow, 708 F.2d 1579, 218
USPQ 198, 199 (Fed. Cir. 1983); Squirtco v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937, 940 (Fed. Cir. 1983); and Paula Payne
Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973). Moreover, where the goods and/or
services in the application at issue and those in the cited
registrations are broadly described as to their nature and type,
it is presumed in each instance that in scope the application and
registrations encompass not only all goods and/or services of the
nature and type described therein, but that the identified goods
and/or services move in all channels of trade which would be
normal therefor and that they would be purchased by all potential
buyers thereof. See, e.g., In re Elbaum, 211 USPQ 639, 640 (TTAB
1981). These principles, however, should not be rigidly or
otherwise indiscriminately applied, especially when the result is
plainly at odds with the real world, with which trademark law is
designed to deal.
In the present case, I disagree that it is a reasonable
construction of the identification of services in each of the
cited registrations to interpret such services as broadly
encompassing any and all kinds of "health care services,"
including, as offered by applicant, the "providing of cosmetic
and reconstructive surgery." Registrant's services are not
identified, for example, as "retirement home services and health
Ser. No. 75/296,222
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care services" or even as "retirement homes and health care
services."1 Rather, registrant's services are set forth in their
entirety as "retirement home and health care services," an
identification which, I find, must fairly be read as restricting
such services to the very limited and most basic "health care
services" which would customarily be provided by a "retirement
home." Such "health care services," given the age and condition
of the typical residents of retirement homes, would not generally
include applicant's "cosmetic and reconstructive surgery"
services, which if needed would be performed in a hospital or
clinical setting, any more than retirement home health care
services would necessarily include, for example, either open
heart surgical procedures or in vitro fertilization techniques.
Yet, under the view of the majority and the Examining Attorney,
the cited registrant must be presumed to be providing all manner
of health care services, including any kind of surgery, in
addition to rendering retirement home services.
Stated otherwise, I simply do not share the slavish position
of the majority that "the fact is that the registrant has listed
both retirement home and health care services". The cited
registrations should not be treated so broadly. Rather, as

1 At the oral hearing the Examining Attorney insisted, when asked, that
"health care services," despite the vast array of medical, surgical and
other health related services covered thereby, was not considered to be
too vague or indefinite and thus would be an acceptable identification
of services.
Ser. No. 75/296,222
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indicated above, a reasonable reading of the language set forth
in registrant's recitation of services, and one which is clearly
neither "distorted" nor contrary to any (notably unspecified)
"acceptable rules of grammatical interpretation," is to construe
the identification of registrant's services to be necessarily
limited to those encompassing the most elementary "health care
services" which a "retirement home" facility would typically
provide its residents. Such services in fact would not and do
not include the providing, as applicant does, of cosmetic and
reconstructive surgery.
In summary, I concur with applicant that the words
"retirement home" cannot be ignored in the identification of
registrant's services and that, when properly considered in
context, the "health care services" included in registrant's
services must be read as implicitly being restricted to the kinds
of general patient care which meet only the most basic medical
and hygienic needs of a retirement home resident. Registrant's
services should not be interpreted so expansively as to include
any types of surgical procedures, including applicant's cosmetic
and reconstructive surgery services.
Accordingly, in the absence of any showing or persuasive
argument that, as identified, the respective services are
identical in part and/or otherwise closely related in a
Ser. No. 75/296,222
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meaningful commercial sense, I would reverse the refusal to
register.
G. D. Hohein
Administrative Trademark Judge,
Trademark Trial and Appeal Board