GCS Group, Inc.

Trademark Trial and Appeal Board

Jun 21, 2002

No. 75205892 (T.T.A.B. Jun. 21, 2002)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
6/21/02

Paper No. 12
GFR

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re GCS Group, Inc.
________

Serial No. 75/205,892
_______

David V. Radack of Eckert Seamans Cherin & Mellott, LLC for
GCS Group, Inc.

Martha Santomartino, Trademark Examining Attorney, Law
Office 112 (Janice O’Lear, Managing Attorney).
_______

Before Seeherman, Hanak and Rogers, Administrative
Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

GCS Group, Inc. has filed an application to register
RES-A-TRACK as a trademark in International Class 9 for
goods identified as “computer software for use in managing
a database of health care providers, scheduling personnel
Ser No. 75/205,892
2
and reporting to government agencies to facilitate
reimbursement.”1
The Trademark Examining Attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant's mark, as used in
connection with the identified goods, is likely to cause
confusion or mistake or to deceive consumers, in view of
the prior registration of the mark RESTRACK 2000 for
“computer software program for documenting resident care in
medical and nursing facilities.”2
When the refusal was made final, applicant appealed.
Both applicant and the Examining Attorney have filed
briefs, but an oral hearing was not requested. We affirm
the refusal.
Our determination under Section 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). In the

1 Serial No. 75/205,892, filed November 29, 1996, based on
applicant's allegation of first use and first use in commerce as
of May 15, 1996. The application was suspended for some time,
pending resolution of the prior-filed application that resulted
in issuance of the registration cited by the examining attorney
to support the refusal of registration considered herein.

2 Registration No. 2,206,029, issued November 24, 1998 to Kelly
Consulting, Inc.
Ser No. 75/205,892
3
analysis of likelihood of confusion presented by this case,
two key considerations are the similarities of the marks
and the similarities of the goods. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976).
We begin with the goods and note that our analysis of
the similarity or relatedness of the goods is based on the
identifications in the involved application and
registration. See Octocom Systems Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990), and Canadian Imperial Bank of Commerce,
National Association v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813, 1815-16 (Fed. Cir. 1987).
Applicant argues that the respective computer programs
are not competitive and that its program is used “in large
teaching hospitals, where the activities of medical
students and medical residents must be tracked,” whereas
registrant’s program is assertedly used only by “nursing
home facilities where patient movements and needs must be
tracked.” (Emphasis by applicant.) As further support for
its argument that registrant’s goods would not be used in
hospitals, applicant asserts that nursing homes have
“residents” while hospitals have “patients” and, therefore,
since registrant’s RESTRACK 2000 mark suggests that the
Ser No. 75/205,892
4
software sold under the mark tracks residents’ care, the
software would only be used in nursing homes, not in
hospitals. There is nothing in the record, however, to
support the contention that residents is a term used only
in conjunction with nursing homes and patients is a term
used only in conjunction with hospitals. We do not find
applicant’s unsupported argument on this point persuasive.3
In short, applicant’s goods are not limited to use in
large teaching hospitals and we agree with the examining
attorney that, as the goods are identified in the
application, they could be used in any facilities employing
health care providers. In addition, in the absence of
support in the record for applicant’s contention that
residents is not a term that can be used to refer to
individuals receiving care in hospitals, we read the
registrant’s identification to encompass computer programs
tracking care being provided to individuals in all sorts of
medical facilities, including hospitals.
Finally, we note that one specific function of
applicant’s program is to “facilitate reimbursement,”
apparently of labor costs associated with providing medical

3 Applicant itself alternately refers to the individuals whose
care is tracked by registrant’s computer program as patients or
residents.
Ser No. 75/205,892
5
care. There is nothing in the identification of
registrant’s program that would preclude its being used to
facilitate reimbursement of these or other costs incurred
when providing medical care. Thus, the programs may be
viewed as complementary, even if they are not competitive.
Even if goods identified in an application and
registration are not competitive, there may still be a
likelihood of confusion, when similar marks are used in
conjunction therewith, if such goods are related in some
manner and/or if the circumstances surrounding their
marketing are such that they would be likely to be
encountered by the same persons under conditions that would
give rise to the mistaken belief that the goods emanate
from or are in some way associated with the same source or
sponsor. See In re Kangaroos U.S.A., 223 USPQ 1025, 1026-
1027 (TTAB 1984), and cases cited therein. In the case at
hand, we find the goods related for purposes of the
likelihood of confusion analysis.
Turning to the marks, we find them very similar. As
applicant acknowledges, the “Res” portion of each mark is
highly suggestive of the term “resident,” and the “Track”
portion of each mark specifies the common “tracking”
function of each program. Applicant argues that the letter
“A” in its mark is the mark’s dominant element and that
Ser No. 75/205,892
6
“2000” is the dominant element of registrant’s mark. We
disagree. We do not find the “A” in applicant’s mark to
impart any particular significance to the mark, or to
detract from the overall connotative significance of the
mark as signifying a program for tracking hospital
residents. Likewise, we do not find the “2000” element of
registrant’s mark nearly as significant in its contribution
to the overall commercial impression of that mark as is the
“RESTRACK” portion. Generally, the first part of a mark is
more likely to be impressed upon the mind of, and be
remembered by, a prospective purchaser. Presto Products
Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB
1988). Moreover, notwithstanding that there is no
disclaimer of “2000” in the cited registration, we agree
with the examining attorney that it would likely be viewed
by purchasers as indicative of a version or model of
registrant’s software. We do not find the presence of
“2000” in registrant’s mark sufficient to overcome the
similarity in sight and sound of RES-A-TRACK and RESTRACK.
While the marks may be different in connotation
insofar as each is suggestive of a program that tracks a
different type of “resident,” we do not find any such
difference in connotation sufficient to outweigh the
overall similarity of the marks in sight and sound. We
Ser No. 75/205,892
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need not find similarity in each of the elements of the
“sound, appearance or meaning” trilogy to find that marks
are similar for purposes of the likelihood of confusion
analysis. See In re Lamson Oil Co., 6 USPQ2d 1041, 1042
(TTAB 1988).
Applicant argues that its goods are expensive and
would only be purchased by sophisticated consumers. Even
so, when marks very similar in appearance and pronunciation
are used on or in connection with related goods, even
sophisticated purchasers may be confused. See, e.g., Weiss
Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990). Moreover, given that the
goods as identified are not competitive but may be viewed
as complementary, even sophisticated consumers may view the
marks as variations on a theme intended to differentiate
related products having a common source or sponsorship.
Decision: The refusal of registration under Section
2(d) of the Lanham Act is affirmed.