flexSCAN, Inc.

Trademark Trial and Appeal Board

Nov 7, 2008

No. 77357357 (T.T.A.B. Nov. 7, 2008)

Mailed:
7 November 2008
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re flexSCAN, Inc.
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Serial No. 77357357
_______

Kit M. Stetina of Stetina Brunda Garred & Brucker for
flexSCAN, Inc.

Khanh M. Le, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______

Before Grendel, Drost, and Zervas, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On December 20, 2007, applicant flexSCAN, Inc. applied
to register the mark APERTURE HEALTH (in standard character
form) on the Principal Register for services ultimately
identified as: “providing health care services, namely,
wellness programs; providing personal medical information
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Ser. No. 77357357
2
to individuals and organizations” in Class 44.1 Applicant
has disclaimed the term “Health.”
The examining attorney has refused to register
applicant’s mark under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because of a registration for the
mark APERTURE (in typed or standard character form) for:
Computerized health care provider data management and
health care provider information management in the
fields of health care and insurance in Class 35

Physician credential verification services in Class
42.2

When the refusal was made final, applicant filed this
appeal.
When there is a question of likelihood of confusion,
we analyze the facts as they relate to the relevant factors
set out 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., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003) and Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000).
We begin by considering the similarities and
dissimilarities of the marks in the application and
registration. Applicant’s mark is APERTURE HEALTH.

1 Serial No. 77357357 is based on applicant’s allegation of a
bona fide intention to use the mark in commerce.
2 Registration No. 2551971 issued March 26, 2002, affidavits
under Sections 8 and 15 accepted or acknowledged.
Ser. No. 77357357
3
Registrant’s mark is simply the single word APERTURE. Both
marks are in typed or standard character form so the only
difference between the marks is the fact that applicant has
taken the entire registered mark and added the term
“Health” to registrant’s mark.
The added word “health” has been disclaimed in
applicant’s mark and disclaimed matter is often “less
significant in creating the mark’s commercial impression.”
In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB
2001). Inasmuch as applicant’s services are identified as
“health care services,” the term “health” is at least
highly descriptive. “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.’” Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000),
quoting, In re National Data Corp., 753 F.2d 1056, 224 USPQ
749, 752 (Fed. Cir. 1985). Because registrant’s services
are also health-related services, “health care provider
data management and health care provider information
management services,” the term “health,” would not have
much significance in distinguishing the marks. In re
Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944,
1946 (Fed. Cir. 2004) (citations omitted) (“With respect to
Ser. No. 77357357
4
GOLD, the Board determined that the term denotes a premium
quality, a descriptive term offering little to alter the
commercial impression of the mark. Indeed, GOLD, in the
context of tequila, describes either a characteristic of
the good - its color - or a quality of the good
commensurate with great value or merit. In sum, the Board
had good reason to discount ALE, JOSE, and GOLD as
significant differences between the marks”).
When we compare the marks APERTURE and APERTURE
HEALTH, we find that they are both dominated by the common
term APERTURE. Furthermore, there is no evidence that the
term “Aperture” is a weak or highly suggestive term for
registrant’s or applicant’s services. Also, contrary to
applicant’s argument (Brief at 8) that the term “Health”
creates a different commercial impression, it is unlikely
that many purchasers would view applicant’s mark as
“meaning a shedding of light on your health,” while viewing
registrant’s mark as meaning simply “an opening.” Brief at
9. Many if not most consumers would ascribe the same
meaning to the identical word APERTURE. The slight
difference in the marks that results from the addition of
the highly descriptive word “health” does not significantly
change their sound, appearance, meaning, or commercial
Ser. No. 77357357
5
impression. Therefore, we find that the marks, in their
entireties, APERTURE and APERTURE HEALTH are very similar.
The next factor that we consider is whether
applicant’s and registrant’s services are related.
Applicant’s services are:
Providing health care services, namely, wellness
programs; providing personal medical information to
individuals and organizations” in Class 44.
Registrant’s services are:
Computerized health care provider data management and
health care provider information management in the
fields of health care and insurance in Class 35

Physician credential verification services in Class
42.

We begin by noting that:

[It] has often been said that goods or services need
not be identical or even competitive in order to
support a finding of likelihood of confusion. Rather,
it is enough that goods or services are related in
some manner or that circumstances surrounding their
marketing are such that they would be likely to be
seen by the same persons under circumstances which
could give rise, because of the marks used thereon, to
a mistaken belief that they originate from or are in
some way associated with the same producer or that
there is an association between the producers of each
parties’ goods or services.

In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
See also Time Warner Entertainment Co. v. Jones, 65 USPQ2d
1650, 1661 (TTAB 2002).
Ser. No. 77357357
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Here, applicant’s services include providing personal
medical information to individuals and organizations and
registrant’s services include data management and health
care provider information management in the fields of
health care. Providing personal medical information would
involve data management and information management. The
examining attorney has submitted internet printouts and
registrations to show that applicant’s and registrant’s
services are related. In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988) (Although third-party
registrations “are not evidence that the marks shown
therein are in use on a commercial scale or that the public
is familiar with them, [they] may have some probative value
to the extent that they may serve to suggest that such
goods or services are the type which may emanate from a
single source”). See also In re Infinity Broadcasting
Corp. of Dallas, 60 USPQ2d 1214, 1217-18 (TTAB 2001). See
Registration No. 3034336 (providing an on-line computer
database featuring information in the healthcare field,
computerized database management in the healthcare field,
and electronic processing of healthcare information); No.
3334545 (providing medical information to allow members to
update their medical and personal files and data and
information management, namely, management of computerized
Ser. No. 77357357
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files containing personal and/or medical information); and
No. 34014733 (electronic processing of health care
information, wellness programs, and providing health care
information by telephone and the Internet). See also
www.mainenetwork.com (“Services included in network [MNH -
Maine Network for Health] membership are: participation in
MNH payor contracts, credentialing for MNH payout
contracts, information services… Health & Wellness Services
programs”) and www.wellogic.com (“Initiate Systems, Inc., a
leading provider of master data management solutions (MDM),
and Wellogic, a leading health information exchange
provider, today announced a combined solution that delivers
accurate health information to clinicians and patients,
enabling better decision making through reliable and
meaningful data exchange”).
We find that the services of applicant and registrant
are related. Health care providers would be purchasers of
services that provide access to personal medical

3 We disagree with applicant’s assertion that this two-class
registration for several health care-related services is somehow
the equivalent of the multi-class house mark registrations
discussed in the Mucky Duck case for the Saks & Co. and Knott’s
Berry Farm marks. A registration is not a house mark because it
contains several goods or services. Furthermore, while applicant
directs our attention to the website of this registrant (Brief at
13), its attempt to supplement the record is not only untimely
(37 CFR § 2.142(d)) but ineffective. In re Planalytics Inc., 70
USPQ2d 1453, 1457 (TTAB 2004) (“A mere reference to a website
does not make the information of record”).
Ser. No. 77357357
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information as well as health care provider data management
and information management services. Similarly,
individuals are likely to use services that provide access
to their personal medical information as well as services
that verify their potential physician’s credentials.
Therefore, we find that the purchasers of applicant’s and
registrant’s services would overlap. Furthermore, these
services are likely to be marketed through the same
channels of trade to organizations such as health care
providers who need access to personal medical information
and health care provider information management services
and individuals who need access to their personal medical
information and physician verifications services.
We add that we do not read limitations into the
identification of services as applicant argues (Brief at
10) and, therefore registrant’s physician credential
verification services would include services marketed to
employers and individuals. 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 regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
Ser. No. 77357357
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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”).
Another point applicant argues is that “employers do
not impulsively enroll their employees in health plans.”
Brief at 15. As we discussed previously, potential
purchasers of applicant’s and registrant’s services would
include ordinary purchasers who may not necessarily be
sophisticated purchasers, even though they may exercise
care before using the identified services. We add that
even if the purchasers are careful or sophisticated, they
“are not immune from source confusion.” In re Total
Quality Group Inc., 51 USPQ2d 1474, 1477 (TTAB 1999). See
also In re Hester Industries, Inc., 231 USPQ 881, 883 (TTAB
1986) (“While we do not doubt that these institutional
purchasing agents are for the most part sophisticated
buyers, even sophisticated purchasers are not immune from
confusion as to source where, as here, substantially
identical marks are applied to related products”). In this
case, even sophisticated purchasers would likely assume
that there is an association between APERTURE health care
Ser. No. 77357357
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provider data management and information management
services and APERTURE HEALTH services of providing medical
information to organizations.
Finally, applicant argues that the “marks have
coexisted without any hint of actual confusion.” The
Federal Circuit has held that the “lack of evidence of
actual confusion carries little weight.” Majestic
Distilling, 65 USPQ2d at 1205. The absence of actual
confusion does not mean there is no likelihood of
confusion. Giant Food, Inc. v. Nation's Foodservice, Inc.,
710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983); J & J
Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18
USPQ2d 1889, 1892 (Fed. Cir. 1991). The assertion of a
lack of actual confusion is particularly ineffective when
the application is based on an intent to use, there is no
evidence of the extent of applicant’s actual use, and the
assertion of no actual confusion is simply argument of
counsel.
When we consider the relevant du Pont factors and the
evidence of record, we are persuaded that there is a
likelihood of confusion if the marks APERTURE and APERTURE
HEALTH were used on the identified services.
Ser. No. 77357357
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Decision: The examining attorney’s refusal to
register applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.