EarlyByrd, LLC

Trademark Trial and Appeal Board

Jan 27, 2016

No. 86321356 (T.T.A.B. Jan. 27, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: January 27, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re EarlyByrd, LLC
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Serial No. 86321356
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Daniel L. Kegan and Jay R. Giusti of Kegan & Kegan, LTD,
for EarlyByrd, LLC.
Annie M. Noble, Trademark Examining Attorney, Law Office 109,
Michael Kazazian, Acting Managing Attorney.
_____

Before Kuhlke, Wolfson and Gorowitz,
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
EarlyByrd, LLC (“Applicant”) seeks registration on the Principal Register of the
mark EARLYBYRD (in standard characters) for
Providing an online non-downloadable Internet-based
system application for healthcare professionals featuring
technology enabling healthcare professionals to schedule
and to make referrals with other health care professionals
in International Class 42.1

1 Application Serial No. 86321356 was filed on July 26, 2014, pursuant to Section 1(a) of
the Trademark Act, based upon Applicant’s claim of first use anywhere and use in
commerce since at least as early as February 3, 2014.
Serial No. 86321356
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The Trademark Examining Attorney refused registration of Applicant’s mark under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles the registered marks EARLY BIRD ALERT (in
standard characters)2 and 3 for
“Telecommunication services, namely, electronic and digital transmission of voice,
data, signals and messages for providing communication between users of the
service and healthcare providers” in International Class 38 as to be likely to cause
confusion.
When the refusal was made final, Applicant filed two requests for
reconsideration. After the Examining Attorney denied the requests for
reconsideration, the appeal was filed. We affirm the refusal to register.
I. Evidentiary Issue
Before proceeding to the merits of the refusal, we address an evidentiary matter.
The Examining Attorney has objected to Applicant’s inclusion with its brief of “a
large volume of new evidence … comprised of Internet website screenshots, tables
and affidavits” as being untimely. Examining Attorney’s Brief, 6 TTABVUE 13.
Evidence submitted after an appeal is untimely and will not ordinarily be
considered by the Board. Trademark Rule 2.142(d); 37 CFR § 2.142(d). Applicant
acknowledges the submission of exhibits with its brief but argues that it should be

2 Registration No. 4199694, registered August 28, 2012.
3 Registration No. 4199696, registered August 28, 2012.
Serial No. 86321356
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accepted because “the bulk of Exhibits 10-162 are merely legible copies of the
Examiner’s Attachments.” Reply Brief, 7 TTABVUE 10. The resubmission of
exhibits that are already of record in the application is unnecessary. TBMP §
1203.02(e) (2015).
To the extent that Applicant’s evidence was first submitted with its brief,4 the
objection is sustained and the evidence and arguments relying on said evidence
have not been considered.5 Evidence submitted during prosecution is already of
record and thus will be considered. All of this evidence was originally submitted by
the Examining Attorney.
II. Likelihood of confusion.
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, two key considerations are the
similarities between the marks and the similarities between 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).

4 The evidence consists of the declarations of Jeremy Bidwell and Daniel Kegan, exhibits 1-
8 and 10-27, and the portions of the websites constituting exhibits 136-162 that were not
submitted by the Examining Attorney.
5 If Applicant wished to file additional evidence after the denial of its second request for
reconsideration, Applicant should have filed a request to remand. TBMP § 1207.02 (2015).
Serial No. 86321356
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A. Similarity or dissimilarity of the marks.
We start by looking at the first du Pont factor, the similarity or dissimilarity of
the marks at issue. Applicant’s mark is EARLYBYRD (in standard characters) and
Registrant’s marks are EARLY BIRD ALERT in standard characters6 and
. Because the design element in one of
the cited marks arguably contains an additional point of difference with Applicant’s
mark, we confine our analysis to the issue of likelihood of confusion between
Applicant’s mark and the cited registration for the mark in standard character
form. That is, if confusion is likely between those marks, there is no need for us to
consider the likelihood of confusion with the cited registration for the mark with
design elements, while if there is no likelihood of confusion between Applicant’s
mark and the cited mark in standard characters, then there would be no likelihood
of confusion with the mark with design elements. See, e.g., In re Max Capital Group
Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
We consider the similarity between the mark EARLYBYRD in standard
characters and the mark EARLY BIRD ALERT in standard characters, and
compare them “in their entireties as to appearance, sound, connotation and
commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005), quoting du
Pont, 177 USPQ at 567.

6 Registration No. 4199694, registered August 28, 2012.
Serial No. 86321356
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While we analyze the marks 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 when evaluating the similarities of the marks. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Applicant’s entire mark consists of the term EARLYBYRD, which is the phonetic
equivalent of EARLY BIRD, the dominant portion of the cited mark EARLY BIRD
ALERT. Despite the slight misspelling of the word BIRD in Applicant’s mark, the
terms are virtually the same. See In re Viterra Inc., 671 F3d 1358, 101 USPQ2d
1905 (Fed. Cir. 2012) (similarity found between mark XCEED and X-SEED &
design). Moreover, the presence or absence of a space between virtually the same
words is not a significant difference. Stockpot, Inc. v. Stock Pot Restaurant, Inc., 220
USPQ 52, 54 (TTAB 1983), aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984)
(“There is no question that the marks of the parties [STOCKPOT and STOCK POT]
are confusingly similar. The word marks are phonetically identical and visually
almost identical”); In re Best Western Family Steak House, Inc., 222 USPQ 827, 827
(TTAB 1984) (“There can be little doubt that the marks [BEEFMASTER and BEEF
MASTER] are practically identical”).
The word ALERT in the cited mark, which is disclaimed, does little, if anything,
to alter the commercial impression of the cited mark. It is well-settled that
disclaimed matter may have less significance in likelihood of confusion
determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000), quoting, In re National Data Corp., 224 USPQ at 752
Serial No. 86321356
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(“Regarding descriptive terms, this court has noted that the descriptive component
of a mark may be given little weight in reaching a conclusion on the likelihood of
confusion”); In re Dixie Rests. Inc., 41 USPQ2d at 1533-34; In re Code Consultants,
Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less
significant in creating the mark’s commercial impression”). Moreover, when
analyzing literal marks, “[i]t is often the first part of a mark which is most likely to
be impressed upon the mind of a purchaser and remembered.” Presto Products Inc.
v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (Likelihood of
confusion found between KIDWIPES and KID STUFF for pre-moistened disposable
towelettes). Thus, consumers are more likely to recall the first part of the cited
mark, EARLY BIRD, when requesting the services.
When we compare the marks EARLYBYRD and EARLY BIRD ALERT in their
entireties, and give greater weight to the dominant elements, we conclude that the
marks are similar in appearance, sound, meaning and overall commercial
impression. See Palm Bay Imports., Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772 at 1692 (affirming the Board’s holding that contemporaneous use of
appellant’s mark, VEUVE ROYALE, for sparkling wine, and appellee’s marks,
VEUVE CLICQUOT and VEUVE CLICQUOT PONSARDIN, for champagne, is
likely to cause confusion, noting that the presence of the “strong distinctive term
[VEUVE] as the first word in both parties’ marks renders the marks similar,
especially in light of the largely laudatory (and hence non-source identifying)
significance of the word ROYALE”); In re Chatam Int’l Inc., 380 F.3d 1340, 1343, 71
Serial No. 86321356
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USPQ2d 1944, 1946 (Fed. Cir. 2004) (“Viewed in their entireties with non-dominant
features appropriately discounted, the marks [GASPAR’S ALE for beer and ale and
JOSE GASPAR GOLD for tequila] become nearly identical.”); and Hewlett-Packard
Co. v. Packard Press, Inc., 281 F.3d 1261, 1266, 62 USPQ2d 1001, 1004 (Fed. Cir.
2002) (finding that even though applicant’s mark PACKARD TECHNOLOGIES
(with TECHNOLOGIES disclaimed) does not incorporate every feature of opposer’s
HEWLETT PACKARD marks, a similar overall commercial impression is created).
Thus, the first du Pont element weighs in favor of a finding of likelihood of
confusion.
B. Similarity or dissimilarity of the services, channels of trade and class of
customers.
We consider next the second and third du Pont factors, the similarity of the
services, the channels of trade, and the class of customers. When determining the
relationship between the services,
[i]t is well settled that the issue of likelihood of confusion
between applied-for and registered marks must be
determined on the basis of the goods [or service] as they
are identified in the involved application and cited
registration, rather than on what any evidence may show
as to the actual nature of the goods [or services], their
channels of trade and/or classes of purchasers.
In re Total Quality Group Inc., 51 USPQ 1474, 1476 (TTAB 1999). See also Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161-1162 (Fed. Cir. 2014). The services as recited in the application are: “providing
an online non-downloadable Internet-based system application for healthcare
professionals featuring technology enabling healthcare professionals to schedule
Serial No. 86321356
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and to make referrals with other health care professionals,” and the services as
recited in the cited registrations are “telecommunication services, namely, electronic
and digital transmission of voice, data, signals and messages for providing
communication between users of the service and healthcare providers.” To
determine if the services are related, we compare the services, as recited, not as
actually offered.
The Examining Attorney argues that the telecommunications services offered by
Registrant and the online technology services offered by Applicant are related
because they commonly emanate from a single source under a single mark. To
support her argument, the Examining Attorney has submitted a number of
registrations covering both non-downloadable software and telecommunications
services relating to healthcare. One of the registrations, Registration No. 226945
covers both “physician recruitment and referral services” and “electronic mail and
telephone voice messaging services.” This registration is evidence, albeit minimal,
that both Applicant’s services and Registrant’s services are of a kind that may
emanate from a single source. See In re RiseSmart Inc., 104 USPQ2d 1931, 1934-
1935 (TTAB 2012); In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB
2001); and In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
The Examining Attorney has also submitted website evidence of individual
entities using the same trademark or trade name in connection with both
Serial No. 86321356
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Applicant’s services and Registrant’s services, or in connection with services very
similar thereto.7 For example,
Eceptionist – www.eceptionist.com/triage.htm - includes
“e-referral” (“the e-referral process is easy and
administratively streamlined for individual clinicians and
healthcare organizations on both the requesting and
receiving ends of all types of referrals”) and “Enterprise
Schedule Manager” (through which “healthcare
organizations have the option to control the entire
scheduling process or to permit patients and/or third
parties controlled access via the Internet” as well as
offering medical professionals and call center specialists
improved availability awareness, which “offers patients
greater choice and reduced and leveled wait times.”
(TSDR pp. 48-49);
Streamline Health - www.streamlinehealth.net/
lookingglass-health-solutions/patient-engagement -
comprised of The Looking Glass platform which includes
an automated physician referral service and a patient
portal that improves communications between patients
and their healthcare providers (TSDR p. 51); and
HealthUnity – www.healthunity.com/solutions/care-
coordination/ - which includes patient portals which
provide patients with a secure means of electronically
communicating with providers on both clinical and
administrative matters and enhanced electronic physician
referrals for collaborative and comprehensive patient care
(TSDR pp. 60-61).
Applicant argues that its services and Registrant’s services are different
because: 1. “Registrant only provides a telecommunication service, permitting direct
communication between a patient (or patient caregiver) and their physician, a

7 While most of this evidence was submitted with the first Office action, it was re-submitted
along with other evidence, as attachments to the May 15, 2015 denial of Applicant’s second
request for reconsideration. All references herein refer to the denial of Applicant’s second
request for reconsideration.
Serial No. 86321356
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communication typically initiated by the non-physician”;8 2. Applicant’s services are
not general communications, but specific referral and scheduling services with other
healthcare professionals”;9 and 3. Applicant provides “significant content
appropriate referrals and referral scheduling services, among healthcare
professionals,”10 which is materially different from Registrant’s telecommunications
services.
By way of its first argument, Applicant asserts that Registrant’s services are
telecommunication services between a patient (or patient caregiver) and their
physician, a communication typically initiated by the non-physician. This
description is narrower than the recitation of services in the cited registration.
Applicant narrows the recited service by specifically limiting the phrase “users of
the service” to “patients or patient caregivers,” and by limiting “healthcare
providers” to “physicians.” Registrant’s recitation of services is defined by the
registration, and cannot be narrowed by argument or extrinsic evidence. In re
Midwest Gaming & Entertainment LLC, 106 USPQ2d 1163, 1165 (TTAB 2013), In
re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008), In re Bercut-Vandervoort
& Co., 229 USPQ2d 763, 764 (TTAB 1986). Further, Applicant does not establish
that the healthcare providers using Registrant’s services are not the same as the
healthcare professionals that use Applicant’s services. Therefore, Applicant’s
argument is of very limited, if any, probative value.

8 Appeal Brief, 4 TTABVUE 3.
9 Id. at 4.
10Id.
Serial No. 86321356
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Therefore, Applicant’s argument is of very limited, if any, probative value.
Applicant’s second argument, that its services “are not general communications,
but specific referral and scheduling services with other healthcare professionals” is
not persuasive. The services need not be identical or even competitive to find a
likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080,
1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000). The respective services need only be
“related in some manner and/or if the circumstances surrounding their marketing
are such that they could give rise to the mistaken belief that they emanate from the
same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1722 (Fed. Cir. 2012) quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d
1715, 1724 (TTAB 2007). “[T]he purchasers and prospective purchasers of
Registrant’s and Applicant’s services are healthcare professionals.” Appeal Brief, 7
TTABVUE 6. As such, both services could be purchased by the same person within
the same entity, i.e. a physician’s office, a medical clinic, or a hospital. The services
would generally be marketed through professional journals, trade shows, and on-
line sites.
In its third argument Applicant states that its “significant content appropriate
referrals and referral scheduling services, among healthcare professionals,” is
materially different from Registrant’s telecommunications services. In support of
this argument, Applicant refers to the safe harbor provisions of the Copyright Act,
17 USC § 512(c). Neither these provisions nor Applicant’s argument is relevant to
our determination of whether Applicant’s and Registrant’s services are related.
Serial No. 86321356
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Applicant has submitted no admissible evidence to rebut the evidence introduced
by the Examining Attorney, which establishes that both services may emanate from
the same source and thus are related. Therefore, we find that the services, as
specified in the recitations of services are related, that the channels of trade and
purchasers overlap, and thus the second and third du Pont factors favor a finding of
likelihood of confusion.
C. Sophistication of customers.
Applicant contends that the purchasers of both its services and Registrant’s
services are sophisticated. We agree that both services are unlikely to be impulse
purchases and the purchasers thereof would be sophisticated. However, because
“the relevant class of buyers may exercise care does not necessarily impose on that
class the responsibility of distinguishing between similar trademarks for similar
[services]. Human memories even of discriminating purchasers . . . are not
infallible.” In re Research and Trading Corp., 793 F2d 1276, 230 USPQ 49, 50 (Fed.
Cir. 1986).
As such, while purchasers of Applicant’s and Registrant’s software are unlikely
to confuse the services, given the similarity in the marks, they could confuse the
source of the services. Moreover, there is no evidence as to the purchasing process to
support a finding that it would outweigh the other du Pont factors. Accordingly, the
sixth du Pont factor is neutral.
Serial No. 86321356
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III. Conclusion.
We conclude, after considering all of the admissible evidence and arguments
bearing on the du Pont factors, including the evidence and arguments that we have
not specifically discussed herein, that there is a likelihood of confusion between
Applicant’s mark EARLYBYRD for “providing an online non-downloadable
Internet-based system application for healthcare professionals featuring technology
enabling healthcare professionals to schedule and to make referrals with other
health care professionals” and Registrant’s mark EARLY BIRD ALERT for
“telecommunication services, namely, electronic and digital transmission of voice,
data, signals and messages for providing communication between users of the
service and healthcare providers.”

Decision: The refusal to register Applicant’s mark EARLYBYRD is affirmed.