Deborah Heart and Lung Centerv.Deborah Strange-Browne Inflam-matory Breast Cancer Foundation

Trademark Trial and Appeal Board

Oct 28, 2004

No. 91154019 (T.T.A.B. Oct. 28, 2004)

Hearing: Mailed: October 28, 2004
September 21, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Deborah Heart and Lung Center
v.
Deborah Strange-Browne Inflammatory Breast Cancer Foundation
________
Opposition No. 91154019
to application Serial No. 76226481
filed on March 19, 2001
_______
John P. Blasko of Fox Rothschild LLP for Deborah Heart and
Lung Center.
Marc N. Blumenthal of Law Office of Marc N. Blumenthal for
Deborah Strange-Browne Inflammatory Breast Cancer
Foundation.
_______
Before Seeherman, Quinn and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Deborah Heart and Lung Center (a not-for-profit New
Jersey corporation) has opposed the application of Deborah
Strange-Browne Inflammatory Breast Cancer Foundation (a not-
for-profit Illinois corporation) to register on the
Principal Register the mark shown below
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91154019
2
for “charitable fundraising services for inflammatory breast
cancer research and raising money for community health
awareness programs” in International Class 36, and
“education services, namely, community health awareness
programs in the nature of seminars and classes” in
International Class 41.1
Opposer asserts as grounds for opposition that it owns
five registered marks, all consisting of or containing the
word DEBORAH, and used in connection with charitable fund-
raising services, educational services, and/or healthcare
services; that opposer’s use of its marks is prior to
applicant’s filing of its application; and that applicant’s
mark, when used in connection with its services, so
resembles opposer’s previously used and registered marks, as
to be likely to cause confusion, mistake, or deception.
Opposer’s five pleaded registrations are identified
below:
1 Application Serial No. 76226481, filed March 19, 2001, based on
applicant’s assertion of a bona fide intention to use the mark in
commerce in connection with the identified services.
Opposition No. 91154019
3
(1) Registration No. 1678027, issued March 3, 1992 for
the mark DEBORAH DIFFERENCE for “healthcare services;
dissemination of information to aid in combating diseases;
scientific research for others relating to diseases” in
International Class 42; Section 8 affidavit accepted,
Section 15 affidavit acknowledged, renewed;
(2) Registration No. 1680724, issued March 24, 1992 for
the mark DEBORAH for “healthcare services; dissemination of
information to aid in combating diseases; scientific
research for others relating to diseases” in International
Class 42; Section 8 affidavit accepted, Section 15 affidavit
acknowledged, renewed;
(3) Registration No. 2229230, issued March 2, 1999 for
the mark DEBORAH … THE HEART OF NEW JERSEY for “charitable
fund raising services” in International Class 36, and
“patient health care services” in International Class 42;
(4) Registration No. 1465813 issued November 27, 1987
for the mark shown below
Opposition No. 91154019
4
for “fund raising services for medical research and health
care” in International Class 36; the words “heart & lung
center” are disclaimed; the mark is lined for the colors red
and blue, but color is not claimed as a feature of the mark;
the mark comprises a heart design in juxtaposition to a
stylized letter ‘D’; Section 8 affidavit accepted, Section
15 affidavit acknowledged; and
(5) Registration No. 1322515 issued February 26, 1985
for the mark shown below
for “fund raising services for medical research and health
care” in International Class 36; “educational services,
namely, conducting seminars/workshops in the field of heart
and lung disease” in International Class 41; and “hospital
dispensary and clinic health services; disseminating
information to aid in combating diseases; and scientific
research performed for others relating to diseases” in
International Class 42; the mark is lined for the colors red
and blue, but color is not claimed as a feature of the mark;
the mark comprises a heart design in juxtaposition to a
Opposition No. 91154019
5
stylized letter ‘D’; Section 8 affidavit accepted, Section
15 affidavit acknowledged.
In its answer applicant admits the following: (i)
paragraphs 2(a)-(d) of the opposition, which are allegations
that opposer owns the mark DEBORAH, and that opposer owns
the first four registrations listed above for the involved
services;2 (ii) paragraph 5 of the opposition, which include
allegations that there is no issue of priority, and that
applicant’s application filing date is subsequent to the
first use of each of opposer’s “DEBORAH Marks” as well as
the issuance of the “DEBORAH Registrations”; and (iii)
paragraph 12 of the opposition to the extent that opposer
has no control over the nature and quality of the services
in connection with which applicant will use its mark.
Applicant otherwise denies the salient allegations of the
notice of opposition.3
The record consists of the pleadings; the file of
applicant’s involved application; the stipulation of the
parties (filed October 29, 2003, via certificate of mailing)
that the testimony of witnesses may be presented in
affidavit form pursuant to Trademark Rule 2.123(b);
opposer’s affidavit testimony, with exhibits, of Spero
2 Applicant did not admit the last two subparagraphs (i.e.,
paragraphs 2(e)-(f)) presumably due to typographical errors made
by opposer, making those two subparagraphs incomplete.
Opposition No. 91154019
6
Margeotes, opposer’s president and CEO; opposer’s notices of
reliance on (i) status and title copies of its five pleaded
registrations, (ii) the file histories of opposer’s five
pleaded registrations; and (iii) certain discovery materials
(i.e., opposer’s first set of interrogatories to applicant,
and applicant’s responses and follow-up answers thereto);
applicant’s affidavit testimony, with exhibits, of Thomas J.
Browne, applicant’s founder and president; and applicant’s
notice of reliance on certain discovery materials (i.e.,
opposer’s responses to applicant’s request for admission
Nos. 1, 3, 4, 8, 10, 20 and 21).
Both parties filed briefs on the case,4 and both
parties were represented at the oral hearing held before the
Board on September 21, 2004.
The Parties
Opposer, Deborah Heart and Lung Center, was established
in 1922 as a tuberculosis sanitarium and pulmonary center in
rural Burlington County, New Jersey, and today it is a 161-
bed hospital with a full-service ambulatory care center,
3 Applicant’s “affirmative defenses” are more in the nature of
further information relating to its denials of opposer’s
likelihood of confusion claim.
4 Opposer resubmitted the evidence originally filed on November
7, 2003 to the Board and, in its brief after trial (p. 6),
opposer noted that it was awaiting a decision by the Board on
opposer’s “petition” that the resubmitted evidence be accorded
the original filing date. Such a motion is not necessary in
general. In this case, in particular, the papers filed on
November 7, 2003 have been located. Accordingly, opposer’s
“petition” regarding the filing date of the resubmission of its
evidence is moot.
Opposition No. 91154019
7
specializing in cardiac, vascular and pulmonary medicine and
technology. It is a teaching hospital with doctors and
nurses coming from around the country and the world to
receive training and education. Opposer also participates
in educational programs such as community education and
health awareness for non-professionals.
The Deborah Hospital Foundation is the fundraising arm
of opposer, and the foundation was established in 1974
solely for that purpose. Opposer’s medical and fundraising
initiatives are inextricably linked, as opposer relies
heavily on volunteers, donors and friends to provide
resources. The success of its fundraising efforts “has a
significant impact on the quantity and quality of charitable
care that [opposer] can provide to patients who could not
otherwise afford the care.” (Margeotes affidavit, paragraph
18.) Any detriment to the success of opposer’s fundraising
can affect its ability to participate in medical research
and quality education as well. (Margeotes affidavit,
paragraph 19.)
Since 1972, opposer has operated a “Children of the
World” medical program, which has helped children from the
United States and many other countries with their medical
and surgical needs.
Doctors throughout the United States and the world
refer patients to opposer. In 2002, opposer performed
Opposition No. 91154019
8
approximately 200,000 medical procedures, attended to 36,000
ambulatory care cases and admitted over 5,000 patients for
an average hospital stay of 6.4 days. Opposer’s total
expenses for 2002 were $140 million (about $90 million of
that total allocated to surgical and medical care of
patients). Opposer has about 50,000 volunteers and 200
chapters (located primarily on the eastern seaboard from
Puerto Rico to Maine).
Opposer has enjoyed extensive media coverage -- local,
national, and international, including being the subject of
a feature on NBC’s TODAY show. New Jersey offers a license
plate displaying opposer’s service marks; and opposer has
won an Aster Award for healthcare marketing.
Opposer has accreditations by and/or memberships in
such organizations as the American Medical Association and
the Joint Commission on Accreditation of Healthcare
Organizations; and it has affiliations with several
hospitals and colleges.
Opposer raises funds through a variety of methods,
including sending fundraising letters to recipients ranging
from individuals to corporations, hosting charity dinners,
and via the Internet through the third-party “iGive.com”
website.
Opposer is aware of no instances of actual confusion.
Opposition No. 91154019
9
Applicant, Deborah Strange-Browne Inflammatory Breast
Cancer Foundation, was formed in 2001, receiving its Section
501(c)(3) designation in June 2002. Thomas J. Browne formed
the foundation in memory of and after the death of his wife,
Deborah Strange-Browne, from inflammatory breast cancer
(IBC) for the purposes of helping the medically underserved
with IBC, to promote public awareness of this disease, to
advance research on IBC, and to educate people about IBC.
Applicant first used the involved mark in connection
with its services in 2002 and has continuously used the mark
since then. Applicant solicits contributions from a mailing
list of family and friends; and it has hosted one
fundraising dinner and has another such dinner planned.
Applicant targets letters to corporations, and is registered
with the “iGive.com” website. In 2002, applicant entered
into an “arrangement” (Browne affidavit, paragraph 10) with
the Little Company of Mary Hospital (a full service
hospital) in Chicago, whereby applicant contributes to fund
treatment directly related to IBC.
Applicant is aware of no instances of actual confusion.
Standing
Without doubt, opposer’s registrations and the
testimony about its activities establish that opposer has
standing to bring this opposition. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000).
Opposition No. 91154019
10
Priority
Applicant admitted in its answer to the notice of
opposition that there is no issue as to priority and that
applicant’s application was filed subsequent to opposer’s
first use of each of its marks (paragraph 5).
Likelihood of Confusion
We turn now to consideration of the issue of likelihood
of confusion. Our determination of likelihood of confusion
is based on an analysis of all of the facts in evidence that
are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the
similarities of the marks and the similarities of the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by §2(d) goes to the cumulative
effect of differences in the essential characteristics of
the goods [and services] and differences in the marks.”).
See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
Although opposer has relied on five registrations for
various DEBORAH marks, in considering the likelihood of
Opposition No. 91154019
11
confusion question, we will focus our analysis on opposer’s
marks DEBORAH for “healthcare services; dissemination of
information to aid in combating diseases; scientific
research for others relating to diseases,” and DEBORAH … THE
HEART OF NEW JERSEY for “charitable fund raising services”
and “patient health care services.”
Applicant strenuously argues that patients will know
which disease they have; seminar attendees will know why
they are attending a seminar and the topic thereof; and
charitable donors will know to whom they want to give their
funds. We acknowledge that the record shows that
applicant’s foundation focuses only on the disease of
inflammatory breast cancer (although not all of applicant’s
identified services are so limited), and that opposer’s
focus generally, although not exclusively, relates to heart
and lung problems. However, the question before us is not
whether consumers/donors would be confused about the
services themselves; rather, the question is whether these
consumers/donors are likely to be confused about the source
of the fundraising and educational services.
Turning first to a consideration of the services, the
issue of likelihood of confusion must be determined in light
of the services as identified in the involved application
and registration(s) and, in the absence of any specific
limitations therein, on the presumption that all normal and
Opposition No. 91154019
12
usual channels of trade and methods of sale are or may be
utilized for such services. See Octocom Systems Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1990); Canadian Imperial Bank of Commerce,
N. A. v. Wells Fargo Bank, 811 F.2d 490, 1 USPQ2d 1813, 1815
(Fed. Cir. 1987); and CBS Inc. v. Morrow, 708 F.2d 1579, 218
USPQ 198 (Fed. Cir. 1983).
Applicant’s identified services are “charitable
fundraising services for inflammatory breast cancer research
and raising money for community health awareness programs”
and “education services, namely, community health awareness
programs in the nature of seminars and classes.”
Opposer’s Registration No. 1680724 is for DEBORAH for,
inter alia, “dissemination of information to aid in
combating diseases.” This service is closely related to
applicant’s “education services, namely, community health
awareness programs in the nature of seminars and classes.”
Both services involve providing information. Further,
applicant’s “community health awareness programs in the
nature of seminars and classes” could include information on
combating diseases, the same information which is identified
in opposer’s identification. In any event, because both
parties provide health information services, the services,
must, at a minimum, be considered closely related.
Opposition No. 91154019
13
Considering the similarities/dissimilarities of
applicant’s mark shown below
and opposer’s mark DEBORAH, it is well settled that marks
must be considered in their entireties because the
commercial impression of a mark to an ordinary consumer is
created by the mark as a whole, not by its component parts.
This principle is based on the common sense observation that
the overall impression is created by the purchaser’s cursory
reaction to a mark in the marketplace, not from a meticulous
comparison of it to others to assess possible legal
differences or similarities. See 3 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition, §23:41 (4th
ed. 2001). See also, Dassler KG v. Roller Derby Skate
Corp., 206 USPQ 255 (TTAB 1980).
However, our primary reviewing Court has held that in
articulating reasons for reaching a conclusion on the
question 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 or portion of
a mark. That is, one feature of a mark may have more
Opposition No. 91154019
14
significance than another. See Sweats Fashions Inc. v.
Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798
(Fed. Cir. 1987); and In re National Data Corporation, 753
F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985).
Applicant essentially contends that the marks are
fundamentally different; that applicant’s composite mark is
different in appearance and impression from each of
opposer’s marks; that the parties’ respective marks are
different in structure; that there is no dominant feature in
applicant’s mark, but rather all elements of its mark must
be considered together; that the parties pronounce the word
“DEBORAH” differently -- applicant’s mark is pronounced as
two syllables (“deb-ra”) and opposer’s mark is pronounced as
three syllables (“deb-OR-ah”); and that the distinct purpose
of applicant’s foundation is part of applicant’s mark
itself.
Opposer essentially contends that DEBORAH is the
dominant feature of applicant’s mark, with the words
“inflammatory breast cancer foundation” disclaimed, and the
stylized letter “d” representing the first word DEBORAH;
that the American public often abbreviates names to use
nicknames, thus emphasizing the word DEBORAH in applicant’s
mark; that while there is a surname in applicant’s mark,
there is no surname in opposer’s DEBORAH marks, such that
consumers could think the DEBORAH in each mark refers to the
Opposition No. 91154019
15
same person; and that potential customers/donors of the
parties’ educational and fundraising services are likely to
perceive applicant’s mark as being a variation of opposer’s
DEBORAH marks.
Obviously, as asserted by applicant, its mark consists
of seven words, in differing fonts, with an underline and a
stylized letter “d.” There are clearly differences between
the applicant’s mark and opposer’s mark DEBORAH. However,
there is no question that the word DEBORAH is the most
prominent word in applicant’s mark, and that the word is
emphasized by the stylized letter “d,” the initial for the
name DEBORAH. The remaining elements in applicant’s mark
are depicted in much smaller type. Thus, the word DEBORAH
is the most memorable feature of applicant’s mark. Although
the stylized letter “d” is prominently depicted, it is the
name DEBORAH which is likely to be pronounced and therefore
remembered. See In re Continental Graphics Corp., 52 USPQ2d
1374 (TTAB 1999); and In re Appetito Provisons Co., 3 USPQ2d
1553 (TTAB 1987).
Applicant’s argument regarding the parties’ different
pronunciations of the word DEBORAH is unpersuasive. Even if
the parties actually pronounce the word DEBORAH in different
ways, the public may not do so. Further, there is no
“correct” pronunciation of a trademark. See In re Belgrade
Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA 1969); Interlego v.
Opposition No. 91154019
16
Abrams/Gentile Entertainment Inc., 63 USPQ2d 1862 (TTAB
2002); and In re Lamson Oil Co., 6 USPQ2d 1041 (TTAB 1987).
Because the words are spelled the same, they are likely to
be pronounced the same by at least some number of consumers.
Overall, applicant’s mark and opposer’s mark DEBORAH
convey the same commercial impression. As noted,
applicant’s mark clearly emphasizes the word DEBORAH, which
is the entirety of opposer’s mark. The name DEBORAH in
applicant’s mark and in opposer’s mark is the same -- that
of a female given name. Although applicant’s mark contains
additional design elements and generic words which relate to
the specific disease covered by applicant’s foundation,
consumers who are familiar with opposer’s services are
likely to believe that applicant’s services emanate from or
are associated with the same source.
With respect to opposer’s Registration No. 2229230 for
DEBORAH … THE HEART OF NEW JERSEY for “charitable
fundraising services,” these services are legally identical
to applicant’s “charitable fundraising services for
inflammatory breast cancer research,” because they encompass
the more limited or specific services in applicant’s
identification. Our primary reviewing Court has stated that
“when marks would appear on virtually identical goods or
services, the degree of similarity [of the marks] necessary
to support a conclusion of likely confusion declines.” See
Opposition No. 91154019
17
Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Although
opposer’s mark DEBORAH … THE HEART OF NEW JERSEY includes
additional wording, the dominant feature remains the word
DEBORAH. The differences between this mark and applicant’s
mark are not sufficient to avoid a likelihood of confusion.
There are no restrictions or limitations on trade
channels or purchasers/donors in the parties’ above-
discussed identified services. Therefore, we must presume
in this administrative proceeding that the parties’ involved
services are offered through all normal channels of trade to
all usual classes of purchasers/donors for such services.
See Octocom Systems Inc. v. Houston Computers Services Inc.,
supra; and Canadian Imperial Bank of Commerce, N.A. v. Wells
Fargo Bank, supra. In fact, here there is evidence that
both parties engage in fundraising under the involved marks
through the same third-party -- the “iGive.com” website.
Looking next at the du Pont factor of the fame of
opposer’s marks, opposer argues that its DEBORAH mark is a
strong trademark that has acquired regional, national and
international renown over the course of eighty years.
Applicant stated the following with regard to the strength
of opposer’s marks: “Applicant has never contended that
Opposer’s mark, or marks are not strong. This has not been
an issue, nor should it be.” (Brief, p. 19.) The record
Opposition No. 91154019
18
herein clearly supports a finding that opposer’s DEBORAH
mark is well known or renowned for its healthcare services.
However, we do not find the evidence in this record adequate
to persuade us that opposer’s mark DEBORAH is well known for
fundraising services and/or for educational services
(dissemination of information regarding combating diseases).
Thus, we will accord opposer’s DEBORAH mark only the normal
scope of protection otherwise afforded to registered marks.
Neither applicant nor opposer is aware of any instances
of actual confusion. However, applicant’s use only
commenced in 2002, so there has been very little time of
overlap of use of the respective marks of these parties.
That is to say, the absence of evidence of actual confusion
is offset by the absence of evidence that there has been a
substantial opportunity for confusion to have occurred. In
these circumstances, we cannot conclude that the apparent
absence of actual confusion is entitled to significant legal
weight in the likelihood-of-confusion analysis. See
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB
1992). In any event, the test is likelihood of confusion,
not actual confusion. See Weiss Associates Inc. v. HRL
Associates Inc., 902, F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990); and In re Kangaroos U.S.A., 223 USPQ 1025 (TTAB
1984).
Opposition No. 91154019
19
Applicant’s argument that it adopted its mark in good
faith is similarly unavailing. Although an intent to trade
on the mark of another is strong evidence of likelihood of
confusion because it is presumed that such an intention is
successful, the converse is not true. That is, good faith
adoption does not necessarily mean that confusion is not
likely. Stated another way, that applicant did not intend
to cause confusion by adopting a similar mark in connection
with virtually identical and closely related services does
not justify registration if confusion is likely to occur.
See Hydra Mac, Inc. v. Mack Trucks, Inc., 507 F.2d 1399,
184 USPQ 351 (CCPA 1975); and Greyhound Corp. v. Both
Worlds Inc., 6 USPQ2d 1635 (TTAB 1988). See also, J & J
Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18
USPQ2d 1889, 1891 (Fed. Cir. 1991) (“Whether there is
evidence of intent to trade on the goodwill of another is a
factor to be considered, but the absence of such evidence
does not avoid a ruling of likelihood of confusion.
(citation omitted).”)
On balance, considering all of the evidence on the
relevant du Pont factors, and giving each such factor its
appropriate weight in the circumstances of this case, we
find that confusion is likely between applicant’s mark (as
shown above) and opposer’s marks DEBORAH and DEBORAH … THE
HEART OF NEW JERSEY when used in connection with these
Opposition No. 91154019
20
similar and closely related services. See Cunningham v.
Laser Golf Corp., supra.
In view of our finding, we need not address the
question of likelihood of confusion with respect to
opposer’s other pleaded registrations. Nor do we need to
address the claims brought by opposer based on its common
law rights.
Decision: The opposition is sustained and registration
to applicant is refused.