Genex Consulting, LLC

Trademark Trial and Appeal Board

Mar 14, 2018

No. 86923820 (T.T.A.B. Mar. 14, 2018)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
March 14, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Genex Consulting, LLC
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Serial No. 86923820
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Michael J. Tsimaras and Matthew Seifert of Hoxie & Associates LLC for
Genex Consulting, LLC.

Steven M. Perez, Trademark Examining Attorney,
Law Office 101 (Ronald R. Sussman, Managing Attorney).
_____

Before Wellington, Gorowitz and Goodman, Administrative Trademark Judges.
Opinion by Wellington, Administrative Trademark Judge:
Genex Consulting LLC (“Applicant”) filed an application for registration on the
Principal Register of the mark Genex Consulting in standard characters for
“Pharmacy benefit management services,” in International Class 36.1 The term
“Consulting” has been disclaimed.

1 Application Serial No. 86923820 was filed on February 29, 2016 under Trademark Act
Section 1(a), 15 U.S.C. § 1051(a), on the basis of Applicant’s allegation of first use of the mark
in commerce on January 1, 2011.
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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
on the identified services, so resembles the following two registered marks, owned by
the same entity, on the Principal Register:
GENEX (Reg. No. 2042174) for: “Medical cost containment” in International
Class 35, and “Consultation services for insurance companies and self-insured
entities relative to physical and/or occupational rehabilitation services for
disabled individuals” in International Class 42;2 and

(Reg. No. 4974961) for: “Health care cost containment;
Health care utilization and review services; Managed care services, namely,
electronic processing of health care information; Managed care services,
namely, utilization review and pre-certification services” in International
Class 35, and “Claims administration in the field of workers’ compensation” in
International Class 36.3

When the refusal was made final, Applicant filed a request for reconsideration
which was denied by the Examining Attorney. Applicant then filed an appeal and this
case has been fully briefed by Applicant and the Examining Attorney. For the
following reasons, we affirm the refusal.

2 Issued as a “typed” mark on March 4, 1997, renewed, and currently owned by GENEX
Services, LLC.
Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. § 2.52, was amended to replace
the term “typed” drawing with “standard character” drawing. Marks registered before that
date that are depicted as “typed” are considered the legal equivalent of a standard character
marks. See In re Brack, 114 USPQ2d 1338, 1339 n.2 (TTAB 2015).
3 Issued on June 7, 2016 to GENEX Services, LLC. The registration contains the following
description of the mark: “The letter ‘x’ is stylized with a diamond above the intersection,
suggesting a human form.”
Serial No. 86923820

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Likelihood of Confusion 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 issue of
likelihood of confusion as set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
1. The Marks
We first consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. See Palm Bay Imps.,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison of the marks,
but instead ‘whether the marks are sufficiently similar in terms of their commercial
impression’ such that persons who encounter the marks would be likely to assume a
connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). The focus is
on the recollection of the average purchaser, who normally retains a general rather
than a specific impression of trademarks. Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106, 108 (TTAB 1975).
With the above principles in mind, we find the applied-for mark, Genex
Consulting, is extremely similar to the registered marks, GENEX and GENEX
(stylized with a design). All three marks begin with the same literal term GENEX
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and are thus visually and aurally very similar. The term GENEX has no
demonstrated meaning or significance in connection with the services nor has it been
shown to be weak based on third-party use of the same term. Thus, as we have often
pointed out, it is generally the first distinctive term in a mark that makes the
strongest impression on consumers for purposes of source-identifying
significance. See Palm Bay Imports Inc., 73 USPQ2d at 1692 (“Veuve” is the most
prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in
the mark and the first word to appear on the label); Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon
encountering the marks, consumers must first notice the identical lead word); Presto
Prods., Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often
the first part of a mark which is most likely to be impressed upon the mind of a
purchaser and remembered”).
The differences between the marks are relatively minor and do not detract from
GENEX being clearly the dominant element of each mark. The secondary, highly
descriptive term in Applicant’s mark, CONSULTING, has been disclaimed and does
very little to distinguish Applicant’s mark from registrant’s marks. See Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“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.”’)
(quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir.
1985)); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed
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matter is often “less significant in creating the mark’s commercial impression”). This
is especially true given that registrant renders “consultation” services; thus
consumers who are already familiar with registrant and its services may simply, and
mistakenly, believe that Applicant’s GENEX CONSULTING mark is a reference to
registrant’s GENEX consultation services.
The cited registrations are for the marks GENEX in standard character form and
. The mark in standard characters can be depicted in various
formats,(need cite) which includes the format that Applicant selects for its mark. The
letter stylization employed in the registered mark is fairly ordinary. We
also keep in mind that Applicant’s mark is in standard characters and thus, if
registered, could appear in various font styles, including that used in
registrant’s stylized mark. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1909 (Fed. Cir. 2012) (holding that the specific font style of a mark cannot serve as
the basis to distinguish it from a mark in standard character form). As to the small
diamond design at the top of the partially-shaded letter X, as to possibly suggest a
human form, this is not so remarkable and may go unnoticed or simply seen as
diamond design.
In its brief, Applicant argues that “it is critical to assess the presentation of the
marks and how the marks are being used.”4 In response to Applicant’s first point, we
emphasize that our analysis does not involve a comparison of the marks as they are

4 4 TTABVUE 7.
Serial No. 86923820

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actually used; rather, our comparison is based on how they are shown in
the drawings of the involved application and cited registrations.
Applicant also contends that the Examining Attorney improperly dissected the
marks by “only comparing the marks after they had been altered – i.e., dissecting
“GENEX CONSULTING” and then analyzing on the part of the mark which supports
[the refusal] while ignoring the other piece.”5 We agree with the assertion that marks
should not be improperly dissecting and we have compared the marks in their
entireties. However, this does not mean that every feature or element of a mark
makes the same impression on consumers; rather, the individual components of
a mark may be weighed to determine a mark’s overall commercial impression. Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161 (Fed. Cir. 2014) (“[Regarding the issue of confusion,] there is nothing improper
in stating that … more or less weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on consideration of the marks in their
entireties.”) (quoting In re Nat’l Data Corp., 224 USPQ at 751). Greater weight is
often given to the dominant feature when determining whether marks are
confusingly similar. Id. In this vein and for the reasons explained above, we find that
the term GENEX is clearly the dominant element of Applicant’s mark as well as the
two registered marks.
Accordingly, the first du Pont factor weighs in favor of finding a likelihood of
confusion.

5 Id. at 8.
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2. The Services and Trade Channels
We now consider the second du Pont factor and “whether the consuming public
may perceive [the respective goods or services of the parties] as related enough to
cause confusion about the source or origin of the goods and services.” In re St. Helena
Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting 7-Eleven Inc.
v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). See also On-line Careline Inc. v.
Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000) (The products
need not be identical or even competitive to find a likelihood of confusion).
“[L]ikelihood of confusion can be found ‘if the respective products are 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, 101 USPQ2d at 1722 (quoting 7-Eleven, 83
USPQ2d at 1724).
Applicant’s services are “pharmacy benefit management” [hereinafter “PBM”]
services. Registrant’s services include “[medical] and health care cost containment …
utilization and review services; [and] managed care services, namely, electronic
processing of health care information.”
To show that the involved services are related, the Examining Attorney submitted
copies of 26 third-party, use-based registrations from the USPTO’s electronic
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database which cover PBM services as well as services like those listed in the cited
registrations.6 These third-party registrations include:
Mark Reg.
No.
Relevant Goods in
Registrations
MEDIMPACT
HEATLTHCARE
SYSTEMS, INC.
(standard characters)
3190693 “Pharmacy benefit management
services, namely, pharmacy claims
processing for insurance companies,
employer groups, government
programs, and health maintenance
organizations via a global computer
network and enrollment eligibility
administration for healthcare plans
and medical plans provided on-line;
… pharmacy benefit management
services, namely, providing on-line
databases in the field of pharmacy
benefits for customers …”
UNITED HEALTH
(standard characters)
3731966 “administration of health care
benefit plans … pharmacy benefit
management services …”
UMR
(standard characters)
3560997 “health care cost containment …
health care cost review … pharmacy
benefit management services … ”
HEALTHSMART
(stylized with design)
4077414 “pharmacy benefit management
services … medical claims case
management services … medical
insurance case management and
utilization review and insurance
claims adjustment services for
healthcare purchasers and payors
and providers …”
CLINICAL VANTAGE
(standard characters)
4056839 “cost management services for
pharmacy benefit and prescription
drug benefit plans of others; health
care utilization management
services; health care utilization and
review services; health care cost
containment …”

6 12 registrations attached to Office Action dated June 17, 2016, at TSDR pp. 4-46; 14
registrations attached to Office Action dated April 13, 2017, at TSDR pp. 2-50.
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The third-party registrations are probative because they serve to suggest that
Applicant’s PBM services and some of the services recited in the cited registrations
are of a type which may emanate from the same source. In re Aquamar, Inc., 115
USPQ2d 1122, 1126 n.5 (TTAB 2015); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d
1467, 1470 n.6 (TTAB 1988). See also In re Anderson, 101 USPQ2d 1912, 1919 (TTAB
2012); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
The relatedness of the involved services based on them possibly coming from a
single source is further demonstrated by the Internet printouts from 5 different
websites that were submitted by the Examining Attorney.7 Indeed, this evidence
suggests that Applicant’s PBM services may actually incorporate, or feature as a
collateral service, some of the services rendered by registrant, such as health care
“cost containment” and “electronic processing of health care information.” For
example, the WELLCOMP website touts its “Pharmacy Benefit Management”
services as including “built in cost saving discounts and other cost control measures.”8
This same website also mentions that WELLCOMP also renders “utilization review”
services, which registrant also provides.9 Another website, Mitchell ScriptAdvisor,
describes itself as having “a firm foundation of pharmacy benefit management” and
has been recognized as “the payor’s choice for cost-contained pharmacy benefit
management (PBM) and ancillary healthcare products and services … we deliver the

7 Attached to Office action dated January 21, 2017, at TSDR 2-12.
8 Id. at p. 6.
9 Id.
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best in … services in the marketplace to reduce claims costs for our clients.”10 Proxsys,
another PBM company offers its cost-saving services to “hospitals, health care
systems and other major employers.”11
Ultimately, based on the aforementioned evidence, we find there is a very close
relationship between Applicant’s PBM services and several of the services listed in
the cited registrations. We further agree with the Examining Attorney that the
aforementioned Internet evidence shows that “the services of [Applicant and
registrant] are likely to be directed to health care benefit providers, employer groups,
municipalities and other entities seeking assistance in the management and
administration of employee health benefit plans12 and that hese consumers are likely
to encounter the involved services being advertised on websites of the providers for
these services.
Accordingly, we find the second and third du Pont factors that involve,
respectively, the relatedness of the services and the similarity of trade channels, also
favor a finding of a likelihood of confusion.13
3. The conditions under which and buyers to whom sales are made -- impulse
vs. careful, sophisticated purchasing.

Applicant contends that the relevant purchasers for its services will exercise more
care in making their decision to engage PBM services. Applicant did not submit any

10 Id. at p. 8.
11 Id. at p. 4.
12 6 TTABVUE 12.
13 See Note 8.
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evidence to support this argument. Nevertheless, based on the inherent nature of the
services, we find that potential clients of Applicant and registrant will not make their
decision to engage such services lightly or impulsively, but will likely exercise an
above-average degree of care. This does not mean, however, that we are persuaded
that these consumers will not be confused when the marks Genex Consulting and
GENEX (in standard characters or stylized with design) are used in connection with
the related services. Rather, due to the close relationship of the services and as
demonstrated by the Internet evidence, clients are likely to be aware that a single
entity can be the source of Applicant’s and registrant’s services and thus be
susceptible to confusion. Palm Bay Imports Inc., 73 USPQ2d at 1695 (“And even more
sophisticated purchasers might be aware that champagne houses offer both types of
products under similar marks, and could easily conclude that VEUVE ROYALE was
Veuve Clicquot’s sparkling wine”).
Accordingly, we find that the the fifth du Pont factor is neutral.
4. Other du Pont Factors -- Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors.
As discussed, Applicant’s mark is very similar to the cited marks. The evidence
shows that Applicant’s services are closely related to some of registrant’s services and
they may emanate from a common source. These services are the type that may be
advertised by the same source on the same website. Ultimately, we find Applicant’s
use of its Genex Consulting mark and registrant’s use of its GENEX marks, in
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connection with their respective services, is likely to cause confusion or to cause
mistake or to deceive.
Decision: The refusal under Section 2(d) is affirmed.