hc1 Insight LLC

Trademark Trial and Appeal Board

Feb 6, 2019

No. 87342388 (T.T.A.B. Feb. 6, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: February 6, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re hc1 Insight LLC
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Serial No. 87342388

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Thomas A. Walsh and Shyla N. Jones of Ice Miller, LLP
for hc1 Insight LLC.

Jason Paul Blair, Trademark Examining Attorney, Law Office 104,
Zach Cromer, Managing Attorney.
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Before Zervas, Taylor and Adlin,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Hc1 Insight LLC (“Applicant”) seeks registration on the Principal Register of the
standard character mark HC1 PROVIDERVIEW for “software as a service (SAAS)
services providing on-line non-downloadable software and applications for healthcare
operations, analysis, reporting of data, and business intelligence in the field of
healthcare, automating the process of uncovering relationships between providers,
tracking provider behavior patterns, and communicating the behavior patterns
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across patients, payers, healthcare organizations, and other organizations” in
International Class 42.1
The Examining Attorney refused registration pursuant to Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so
resembles the previously registered mark PROVIDERVIEW (in typed form)2 for
“providing temporary use of online non-downloadable software in the field of
healthcare, namely, for accessing databases containing information on the clinical
and financial performance of hospitals, nursing homes and other health care
providers” in International Class 423 that, as used for Applicant’s identified services,
it is likely to cause confusion or mistake or to deceive.
After the Examining Attorney issued a final refusal, Applicant appealed and both
Applicant and the Examining Attorney filed briefs. We affirm the refusal to register.
I. Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on an
analysis of the probative facts in evidence that are relevant to the factors bearing on
a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973) (“du Pont”); see also Palm Bay Imps., Inc. v. Veuve Clicquot

1 Application Serial No. 87342388, filed on February 20, 2017 pursuant to Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), asserting a bona fide intent to use the mark in
commerce.
2 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings.
“‘Standard character’ or ‘typed’ registrations are federal mark registrations that make no
claim to any particular font style, color, or size of display and, thus, are not limited to any
particular presentation.” Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1256 (Fed. Cir. 2011) (citations omitted); see also 37 C.F.R. § 2.52(a).
3 Registration No. 2594640, registered July 16, 2002. Renewed.
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Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005);
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). 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). “Not all of the [du Pont] factors are relevant to every case,
and only factors of significance to the particular mark need be considered.” Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1719 (Fed.
Cir. 2012) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259
(Fed. Cir 2010)).
A. The Marks
We first consider whether Applicant’s and registrant’s marks are similar when
viewed in their entireties in terms of appearance, sound, connotation and commercial
impression. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1689). The test under the
this du Pont factor is not whether the marks can be distinguished when subjected to
a side-by-side comparison, but rather whether the marks are sufficiently similar that
confusion as to the source of the services offered under the respective marks is likely
to result. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1748 (Fed.
Cir. 2017); Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721. The
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focus is on the recollection of the average purchaser, who normally retains a general
rather than a specific impression of trademarks. See Mini Melts, Inc. v. Reckitt
Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118
USPQ2d 1084, 1089 (TTAB 2016); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106
(TTAB 1975).
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
determining whether the marks are similar. In re Nat’l Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985) (“[T]here is nothing improper in stating that, for
rational reasons, 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.”).
The only difference between the marks is Applicant’s addition of the term HC1 to
registrant’s mark. Likelihood of confusion has often been found where the entirety of
one mark is encompassed by another. See, e.g., The Wella Corp, v. Calif. Concept
Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT
and surfer design for men’s cologne, hair spray, conditioner and shampoo likely to
cause confusion with the mark CONCEPT for cold permanent wave lotion and
neutralizer); In re Riddle, 225 USPQ 630, 632 (TTAB 1985) (“Richard Petty’s Accu
Tune” for automotive service centers specializing in engine tune-ups and oil changes
likely to cause confusion with “Accutune” automotive testing equipment.”).
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Here, HC1 is Applicant’s house mark.4 In general, the use of a house mark does
not obviate confusion. In re Mighty Leaf Tea, 94 USPQ2d at 1260. “The exceptions to
this general rule are where 1) the marks in their entireties convey significantly
different commercial impressions, or 2) the matter common to the marks is not likely
to be perceived by purchasers as distinguishing source because it is merely
descriptive or diluted.” General Mills Inc. v. Fage Dairy Processing Industry SA, 100
USPQ2d 1584, 1602 (TTAB 2011).
The first exception does not apply here because the addition of HC1 does not
change the commercial impression of the mark; HC1 does not impart a different
meaning to PROVIDERVIEW.
Turning to the second exception, Applicant argues that PROVIDERVIEW is a
weak term because registrant’s services involve “software … for health care
providers, as opposed to recipients of healthcare, and allows them to access or view
database information.” (emphasis in original).5 Applicant reasons that as a
consequence of its weakness, and because HC1 is Applicant’s house mark and HC1 is
the first term in the mark and consumers are generally more inclined to focus on the
first word, prefix, or syllable in any trademark or service mark, HC1 is the dominant
term in its mark.

4 Of course, HC1 is part of Applicant’s corporate name and is the subject of several
registrations owned by Applicant’s parent corporation, identified in a consent to register
agreement. December 1, 2017 Pet. to Revive, TSDR 14.
5 Applicant’s brief at 15, 4 TTABVUE 16.
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Applicant has not introduced any evidence to establish that PROVIDERVIEW is
descriptive or diluted. The fact that registrant’s mark is registered on the Principal
Register (not the Supplemental Register) without any claim of acquired
distinctiveness weighs against Applicant’s argument, and the cases upon which
Applicant relies are distinguishable because the shared terms in those cases were at
a minimum highly descriptive or supported by evidence. See, e.g., Knight Textile Corp.
v. Jones Invest. Co., 75 USPQ2d 1313 (TTAB 2005) (the Board found ESSENTIALS
to be a highly suggestive term demonstrated by dictionary definition and 23 third-
party registrations registered to 21 different owners).
We recognize that registrant’s mark is not arbitrary. Registrant’s recitation of
services makes clear that the services are for the benefit of “providers.” “View”
however, is defined as “sight,” and, broadly speaking, while providers may “see”
information accessed by the services, this connotation is not direct or immediate.6
Without evidence establishing the degree of weakness of PROVIDERVIEW, however,
Applicant has not established that the term is so weak as to allow for the registration
of Applicant’s highly similar mark.
In view of the foregoing, we follow the teaching of In re Mighty Tea Leaf and find
that the addition of the house mark does not obviate confusion. We find too that due

6 https://www.merriam-webster.com/dictionary/view. The Board may take judicial notice of
dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ
594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online
dictionaries that exist in printed format or regular fixed editions. In re Red Bull GmbH, 78
USPQ2d 1375, 1377 (TTAB 2006).
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to the inclusion of the term PROVIDERVIEW, the marks are similar in appearance,7
sound, meaning and commercial impression.
This du Pont factor weighs in favor of a finding that confusion is likely.
B. The Services, Trade Channels and Classes of Purchasers
For convenience we repeat Applicant’s and registrant’s services:
Applicant: “software as a service (SAAS) services providing on-line
non-downloadable software and applications for healthcare operations,
analysis, reporting of data, and business intelligence in the field of
healthcare, automating the process of uncovering relationships between
providers, tracking provider behavior patterns, and communicating the
behavior patterns across patients, payers, healthcare organizations, and
other organizations.”

Registrant: “providing temporary use of online non-downloadable
software in the field of healthcare, namely, for accessing databases
containing information on the clinical and financial performance of
hospitals, nursing homes and other health care providers.”

Both identifications include non-downloadable software in the field of healthcare.
Registrant’s software is for accessing databases which concern clinical and financial
performance of health care providers. Applicant’s software pertains to, inter alia,
healthcare operations. “Operation” is broadly defined in the definition of record as
“performance of a practical work or of something involving the practical application
of principles or processes”8 and hence includes – in the context of healthcare - access

7 As standard character marks, both marks may be displayed in the same lettering style.
Standard character marks may be displayed in any lettering style because the rights reside
in the wording or other literal element and not in any particular display or rendition. See In
re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf
Tea, 94 USPQ2d at 1260.
8 January 5, 2018 Office Action, TSDR 16 (Merriam-Webster Online Dictionary).
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to databases with information involving the clinical and financial performance of
health care providers. In addition, Applicant’s recitation of services refers to software
for analysis and reporting of data – this too is encompassed within the “financial
performance” data provided through registrant’s recitation of services (and vice
versa). In sum, Applicant’s recitation of services is broadly written and its services
encompass registrant’s services, at least in part. The services are therefore legally
identical.
Applicant argues:
Applicant’s software services are distinct as they are specifically for
analyzing and automating relationships between providers as well as
the behavior patterns of patients, payers, and healthcare organizations.
These services focus on the interactions between how the patient is
being served by healthcare organizations, what the patient needs, and
how the patient’s services are being paid (i.e. by the patient or by its
insurer). These services are marketed for their human performance
evaluations functions. Conversely, Registrant’s software services focus
on the clinical and financial performance of health care facilities. These
services focus on the financial health of the facility itself based on the
clinical services offered, and are marketed for their financial
performance functions.9

Applicant’s recitation of services does not contain the limitations described by
Applicant. We consider the recitation of services as stated and do not read restrictions
into the recitation based on Applicant’s actual use of its mark. Octocom Syst. Inc. v.
Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990).
Applicant’s arguments are therefore not persuasive.

9 Applicant’s brief at 13, 4 TTABVUE 14.
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Turning to the trade channels and classes of consumers, because the services are
legally identical, we presume that the channels of trade and classes of purchasers for
those services are identical. See In re Viterra Inc., 101 USPQ2d at 1908 (even though
there was no evidence regarding channels of trade and classes of consumers, the
Board was entitled to rely on this legal presumption in determining likelihood of
confusion); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because
the goods are legally identical, they must be presumed to travel in the same channels
of trade, and be sold to the same class of purchasers.”).
The du Pont factor regarding the relatedness of the services, and the factors
regarding purchasers and trade channels, strongly favor a finding of likelihood of
confusion.
C. Care/Purchaser Sophistication
Although Applicant provided no evidence of customer sophistication, we accept
that some purchasers of Applicant’s and registrant’s services are likely to be careful
and sophisticated. The Examining Attorney concedes that “‘customers that make
purchases in the medical field are considered sophisticated purchasers.’”10 The du
Pont factor regarding purchaser care and sophistication favors a finding of likelihood
of confusion.

10 6 TTABVUE 10.
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D. Conclusion
We have considered all of the arguments of the Examining Attorney and
Applicant, including arguments not specifically addressed in this decision. The
overlapping services, trade channels and classes of consumers, as well as the
similarity of the marks, all favor a finding of likelihood of confusion, and outweigh
purchaser sophistication and any care taken in purchasing decisions. The Board has
noted that even careful purchasers who are knowledgeable as to the goods or services
are not necessarily knowledgeable in the field of trademarks or immune to source
confusion arising from the use of identical marks on or in connection with related
goods or services. In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009);
see also In re Wilson, 57 USPQ2d 1863, 1867 (TTAB 2001) (“[T]he sophistication and
care of purchasers under the fourth du Pont factor is not controlling in this case, and
that it does not render these purchasers immune to source confusion arising from use
of these highly similar marks on these related goods.”); In re Total Quality Group
Inc., 51 USPQ2d 1474, 1477 (TTAB 1999) (“[E]ven careful purchasers are not immune
from source confusion”); In re Hester Indus., 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.”). Further, Applicant has not demonstrated any weakness in the

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marks’ shared term. In view thereof, we find that Applicant’s mark for its services is
likely to be confused with registrant’s mark for its services.
Decision: The refusal to register is affirmed.