flexSCAN, Inc.

Trademark Trial and Appeal Board

Sep 3, 2008

No. 77018182 (T.T.A.B. Sep. 3, 2008)

Mailed: September 3, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re flexSCAN, Inc.
________

Serial No. 77018182
_______

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

Benji Paradewelai, Trademark Examining Attorney, Law Office
101, Ronald R. Sussman, Managing Attorney.
_______

Before Seeherman, Holtzman, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

flexSCAN, Inc. seeks registration of the following
mark

for
Providing temporary use of on-line non-downloadable
software for medical records, prescription tracking
and management, insurance tracking and management,
diet management and planning, fitness management and
planning, disease detection and prevention, health and
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77018182
2
wellness education, and lifestyle tracking and
modification. International Class 42.1

Registration has been finally refused pursuant to
Trademark Act § 2(d), 15 U.S.C. § 1052(d), on the ground
that applicant’s mark so resembles the mark in Registration
No. 30476152 (shown below), as to be likely, if used in
connection with the identified services, to cause
confusion, to cause mistake, or to deceive.

for
Providing temporary use of on-line non-downloadable
software to healthcare providers for use in
maintaining and accessing patient medical records,
assessing workflow and managing patient accounts.
International Class 42; and

Medical services and medical information services,
namely, providing clinical diagnostic laboratory
testing ordering, results reporting and related
healthcare information and medical insights
electronically over the Internet, or by other
electronic means, to clients, such as health care
consumers, physicians or hospitals. International
Class 44.

Applicant and the examining attorney filed briefs.
After careful consideration of the record, we reverse.

1 Filed August 10, 2006, based on the allegation of a bona fide
intent to use the mark in commerce.
2 Registered January 24, 2006.
Serial No. 77018182
3
I. Applicable Law
Our determination under Trademark Act § 2(d) is based
on an analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311,
65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[or services] and differences in the marks.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976); and In re Azteca Restaurant
Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999).
II. Discussion
At the outset, we note that the examining attorney
makes no mention in his brief of the registrant’s
International Class 44 medical services. See Ex. Att. Br.
at 1-2 (describing registrant’s Class 42 services as
Serial No. 77018182
4
registrant’s services “in relevant part.”) We accordingly
presume that the registration of registrant’s mark for such
services is not considered a bar to registration of
applicant’s mark.
A. The Similarity Or Dissimilarity of the Marks in
Their Entireties as to Appearance, Sound,
Connotation and Commercial Impression.

In a likelihood of confusion analysis, we compare the
marks for similarities and dissimilarities in appearance,
sound, meaning and commercial impression. Palm Bay, 73
USPQ2d at 1692. While we must consider the marks in their
entireties, it is entirely appropriate to accord greater
importance to the more distinctive elements in the marks.
In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). As has often been stated, when a mark
consists of words and a design, the word portion is likely
to make the greatest impression on the mind of the
consumer. E.g., In re Appetito Provisions Co., 3 USPQ2d
1553, 1554 (TTAB 1987). Further, the first word of a
compound mark is often more likely to make a stronger
impact on consumers and the way they remember the mark.
E.g. Wet Seal Inc. v. FD Mgmt. Inc., 82 USPQ2d 1629, 1639
(TTAB 2007).
The examining attorney argues that “the marks are
similar because each mark is comprised of a single word
Serial No. 77018182
5
followed immediately by the identical number together with
a circular design element that create [sic] the same
commercial impression of complete health.” Ex. Att. Br. at
2. On the other hand, applicant contends that the marks
“are different in relation to their appearance, connotation
and sound....” App. Br. at 7.
We begin by noting the obvious: both marks contain the
number “360.” As the examining attorney notes, “the term
360 is identical in both marks and means 360º or 360
degrees, suggesting full circle or complete.” Ex. Att. Br.
at 3. In the context of the applicant’s services and the
registrant’s International Class 42 services, “360” implies
that the offered services are comprehensive.3 While this
element is common to both marks – and carries with it the
same connotation – we also find that the term is suggestive
of the identified services, and is thus not highly
distinctive.
But beyond sharing the number “360,” the two marks
have nothing else in common. The first words of the marks
are WELLNESS and CARE, respectively. Although the

3 We do not find applicant’s submission of three pages of search
engine results for the term “360” to be helpful. Such material
has little or no probative value. In re Bayer Aktiengesell-
schaft, 82 USPQ2d 1828, 1933 (Fed. Cir. 2007). Nonetheless, the
examining attorney’s statements regarding the meaning of the term
are consistent with applicant’s argument, and we have accepted
them at face value.
Serial No. 77018182
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examining attorney argues that “both share the same meaning
because both terms connote a sense of overall health and
well being,” Ex. Att. Br. at 3, the actual meaning of the
words is so different that consumers are not likely to view
them as having a similar connotation, despite the fact that
they may abstractly reference the concept of health.
As shown by the examining attorney’s dictionary
evidence, “wellness” is “[t]he condition of good physical
and mental health, especially when maintained by proper
diet, exercise, and habits,” THE AMERICAN HERITAGE DICTIONARY OF
THE ENGLISH LANGUAGE (4th ed. 2000)(online), while “care” means
a “burdened state of mind,” “upkeep or maintenance,” “to be
concerned or interested,” or “to provide needed
assistance....” Id. While “wellness” may result from
“care,” these words clearly do not mean or imply the same
thing. Moreover, as applicant points out, these words lend
a different appearance and pronunciation to their
respective marks.
Finally, the examining attorney argues that the
“design elements” in the marks are similar and – because
both are circular – they “reinforce[] the full circle
impression.” Ex. Att. Br. at 3. We disagree. While the
design element in the registration (an arrow forming the
zero in the number 360) does echo the 360º theme, the
Serial No. 77018182
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design element which appears on the opposite side of
applicant’s mark appears to be a stylized flower or
pinwheel design, not a circle or reference to all-around
wellness.
Considered in their entireties, we find these marks to
be largely dissimilar. The visual and conceptual focus of
the marks are the first word “WELLNESS” in applicant’s mark
and “CARE” in opposer’s. These elements look and sound
different, and carry different meanings. The design
elements in both marks further distinguish them. In all,
the differences in the marks outweigh the presence in each
of the suggestive term “360,” and strongly support
reversal.
B. The Conditions Under Which and Buyers to Whom
Sales are Made.

The services recited in both the application and in
the cited registration relate to the keeping and
dissemination of medical data. Because, as discussed
infra, applicant’s recitation of services is not limited,
we must construe applicant’s customers to include both
patients and health care professionals, although the
registrant’s services are limited to health care
professionals. As a result, the only consumers likely to
Serial No. 77018182
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be exposed to both marks and services – and to be
potentially confused – are health care professionals.
Given the importance of medical record-keeping and the
associated concerns and laws respecting patient privacy, we
think the health-care professionals who encounter both
applicant’s and the registrant’s services in the
marketplace are likely to exercise care in selecting them.
Such customers are clearly not immune from source
confusion. However, confusion tends to be somewhat less
likely under such conditions than when goods or services
are purchased on impulse or without careful thought.
Accordingly, this factor favors reversal.
C. The Similarity Or Dissimilarity And Nature Of The
Services; Channels of Trade and Potential
Purchasers

In determining registrability, we must limit our
consideration to the services, channels of trade, and
potential purchasers as set out in the application and the
cited registration. See In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). Regardless of the consumers to whom applicant
actually renders its services, we may not read limitations
into the services as set out in the application. We must
accordingly construe applicant’s services as being offered
to both patients and healthcare providers. Octocom Systems
Serial No. 77018182
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Inc. v. Houston Computers Services Inc., 16 USPQ2d 1783,
1786-87 (Fed. Cir. 1990).
We agree with the examining attorney that applicant’s
services are legally identical or highly similar to the
extent that they both include providing the use of software
for managing medical records. We likewise find that
applicant’s potential purchasers are not limited to
patients, but include those services provided to doctors,
nurses, and the like.
III. Conclusion
In weighing the relevant considerations, “one DuPont
factor may be dispositive in a likelihood of confusion
analysis, especially when that single factor is the
dissimilarity of the marks.” Champagne Louis Roederer S.A.
v. Delicato Vineyards, 148 F.3d 1373, 1375, 47 USPQ2d 1459,
1460-61 (Fed. Cir. 1998); citing Kellogg Co. v. Pack'em
Enters., 951 F.2d 330, 21 USPQ2d 1142, 1144-45 (Fed. Cir.
1991).
Although we recognize that applicant’s services are in
part identical or closely related to those recited in the
prior registration and that the potential purchasers of the
goods overlap, we find that the differences in the marks,
considered in their entireties, outweigh these factors.
Further, although not dispositive, the fact that the only
Serial No. 77018182
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consumers likely to be exposed to both marks are also
likely to exercise care in purchasing further supports our
conclusion.
Decision: The refusal to register under Trademark Act
§ 2(d) is accordingly reversed.