Healthcare Distribution Management Association

Trademark Trial and Appeal Board

Jan 22, 2008

No. 78602188 (T.T.A.B. Jan. 22, 2008)

Mailed: January 22, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Healthcare Distribution Management Association
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Serial No. 78602188
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Thomas J. Moore of Bacon & Thomas, PLLC for Healthcare Distribution
Management Association.

Priscilla Milton, Trademark Examining Attorney, Law Office 110 (Chris
A. F. Pedersen, Managing Attorney).
_______

Before Hairston, Zervas and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application has been filed by Healthcare Distribution
Management Association to register the mark HEALTHCARE DISTRIBUTORS
INTERNATIONAL in standard character form for the following goods and
services:
publications, namely, magazines, reports and newsletters in
the field of healthcare product distribution; downloadable
electronic publications in the nature of magazines, reports
and newsletters in the field of healthcare product
distribution; electronic publications in the nature of
magazines, reports and newsletters in the field of
healthcare product distribution recorded on electronic and
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Serial No. 78602188
2
optical media (in International Class 16);

association services, namely, promoting the interests of
the distributors of healthcare products, creating and
exchanging knowledge that affects the future of
distribution management, and influencing the standards and
business processes that produce efficient healthcare
commerce; online business directories featuring products,
services and businesses related to the distribution of
healthcare products; arranging and conducting trade show
exhibitions in the field of the distribution of healthcare
products and the management of healthcare product
distribution businesses (in International Class 35);

arranging and conducting educational conferences in the
field of the distribution of healthcare products and
healthcare product distribution businesses (in
International Class 41); and

arranging and conducting trade show exhibitions in the
field of the distribution of healthcare products to
hospitals (in International Class 44).

The application was filed on April 5, 2005 based on an allegation of
applicant’s bona fide intention to use the mark in commerce.1 In
addition, the application was filed seeking registration of its mark
under Section 2(f) of the Trademark Act, based on applicant’s
ownership of Registration No. 2888102 for the mark HEALTHCARE
DISTRIBUTION MANAGEMENT ASSOCIATION in typed or standard character
form for the following goods and services:
publications and other printed matter, namely newsletters,
books, guides, directories, and catalogs featuring
information on the distribution of health care products and
pharmaceuticals (in International Class 16);

providing business information in the field of product

1 Application Serial No. 78602188.
Serial No. 78602188
3
information, marketing and operational supply chain
efficiency for others; providing business information
relating to the distribution of healthcare products and
pharmaceuticals on a global computer network; business
research; public and media relations (in International
Class 35);

electronic mail services; providing on-line electronic
bulletin boards for transmission of messages among computer
users concerning products, services, and issues pertinent
to the healthcare and pharmaceutical distribution
industries; providing Internet access (in International
Class 38);

educational services, namely, arranging and conducting
educational and training conferences and seminars
concerning marketing, sales, distribution, accounting,
finance, technology and information services, personnel,
and regulatory compliance in the area of the distribution
of health care products and pharmaceuticals (in
International Class 41); and

association services, namely, promoting the interests of
the healthcare products and pharmaceuticals distribution
industry; political advocacy and lobbying services in the
fields of healthcare and pharmaceuticals via the Internet
(in International Class 42).

The registration issued on September 28, 2004 under Section 2(f) of
the Trademark Act, with a disclaimer of “ASSOCIATION” apart from the
mark as shown.
The trademark examining attorney refused registration under
Section 2(e)(1) of the Trademark Act on the ground that applicant’s
mark is merely descriptive of its goods and services and that
applicant’s evidence is insufficient to show acquired distinctiveness
of the mark under Section 2(f) of the Act. When the refusal was made
final, applicant appealed. Applicant and the examining attorney have
Serial No. 78602188
4
filed briefs, and an oral hearing was held.
Applicant having filed the application seeking registration
under Section 2(f) has conceded that the mark is merely descriptive
under Section 2(e)(1). See Yamaha International Corp. v. Hoshino
Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988);
and General Foods Corporation v. MGD Partners, 224 USPQ 479, 485
(TTAB 1984). Thus, the sole issue on appeal is whether applicant has
carried its burden of establishing, by a preponderance of the
evidence, a prima facie case that its merely descriptive mark has
acquired distinctiveness under Section 2(f). See Yamaha
International Corp. v. Hoshino Gakki Co. Ltd., supra; and In re
Rogers, 53 USPQ2d 1741 (TTAB 1999).
Trademark Rule 2.41(b) provides that ownership of a registration
of “the same mark” on the Principal Register may be accepted as prima
facie evidence of acquired distinctiveness. In relying on this rule,
an applicant is essentially seeking to “tack” the use of the
registered mark to its use of the present mark for purposes of
transferring distinctiveness to the new mark. See In re Flex-O-
Glass, Inc., 194 USPQ 203 (TTAB 1977). Thus, the analysis used to
determine whether applicant’s present mark is “the same mark” as its
previously registered mark, for purposes of the rule, is the analysis
used in tacking cases, i.e., whether the marks are legal equivalents.
See Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17
Serial No. 78602188
5
USPQ2d 1866 (Fed. Cir. 1991). See also In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir.
2001).
To meet the legal equivalents test, the marks must be
indistinguishable from one another or create the same, continuing
commercial impression such that the consumer would consider both as
the same mark. See Van Dyne-Crotty, Inc. v. Wear-Guard Corp., supra;
and In re Dial-A-Mattress Operating Corp., supra. Therefore, a minor
difference in the marks, such as an inconsequential modification or
modernization of the later mark, would not be a basis for rejecting
application of the rule. See In re Loew's Theatres, Inc., 223 USPQ
513 (TTAB 1984) aff’d, 769 F.2d 764 (Fed. Cir. 1985); and In re Flex-
O-Glass, Inc., supra. On the other hand, it has been made clear that
two marks are not necessarily legal equivalents merely because they
would be deemed confusingly similar. See Van Dyne-Crotty, Inc. v.
Wear-Guard Corp., supra. Aside from the identity of the marks in the
registration and the application, applicant is also required to
establish, through submission of relevant evidence rather than mere
conjecture, a sufficient relationship between the goods and services
in the prior registration and the goods and services identified in
the application to warrant the conclusion that the distinctiveness of
the mark associated with the goods and services in the registration
will “transfer” to the goods and services listed in the application.
Serial No. 78602188
6
See In re Rogers, supra.
It is applicant’s contention that HEALTHCARE DISTRIBUTORS
INTERNATIONAL and HEALTHCARE DISTRIBUTION MANAGEMENT ASSOCIATION
create the same continuing commercial impression and that “the
primary impression of the present mark is almost identical to the
primary impression of the registered mark” (brief, p. 8). Citing the
Dial-A-Mattress case, applicant asserts that both marks share the
term HEALTHCARE and that DISTRIBUTORS in its applied-for mark is
nearly identical to DISTRIBUTION in its registered mark. Applicant
further argues that the term INTERNATIONAL in its applied-for mark as
well as the term MANAGEMENT and the disclaimed term ASSOCIATION in
its registered mark “are each not highly distinctive, and are each
related to the relevant goods and services” (brief, p. 8). Applicant
argues that, as a result, “Applicant’s members, and those familiar
with Applicant, would immediate[sic] associate” its applied-for mark
HEALTHCARE DISTRIBUTORS INTERNATIONAL with its registered mark
HEALTHCARE DISTRIBUTION MANAGEMENT ASSOCIATION “because of the
similarity between the two” (Id. at 9). Applicant did not submit any
additional evidence in support of its claim that HEALTHCARE
DISTRIBUTORS INTERNATIONAL has acquired distinctiveness under Section
2(f) of the Trademark Act.
The examining attorney, finding applicant’s arguments
unpersuasive, maintains that the two marks are not legal
equivalents. The examining attorney contends that
HEALTHCARE DISTRIBUTORS INTERNATIONAL “when used in
connection with the identified goods/services describes the
intended users, healthcare distributors and the scope of
the services, international in scope” (brief, unnumbered p.
11). The examining attorney further contends that, in
contrast, “[u]se of HEALTHCARE DISTRIBUTION MANAGEMENT
ASSOCIATION in connection with applicant’s goods and
services conveys to the consumer that a trade association
is offering goods and services whose subject matter is
management in the fields of healthcare distribution” (Id.).
Thus, the examining attorney argues that the marks “are not
indistinguishable and certainly do not create the same,
continuing commercial impression such that the consumer
would consider them both the same mark” (Id. at unnumbered
p. 10).
We agree with the examining attorney that applicant’s
present mark, HEALTHCARE DISTRIBUTORS INTERNATIONAL, while
perhaps confusingly similar to, is clearly not the legal
equivalent of the registered mark, HEALTHCARE DISTRIBUTION
MANAGEMENT ASSOCIATION. Unlike the Dial-A-Mattress case on
which applicant relies, the differences between the marks
Ser No. 78602188
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involved in this case go far beyond a minor difference in
spelling.
The dictionary and Internet evidence made of record by
the examining attorney clearly shows that the applied-for
mark HEALTHCARE DISTRIBUTORS INTERNATIONAL connotes a
feature or characteristic of the goods and services
identified thereby, namely, that they will be purchased
and/or utilized by healthcare distributors to provide
health related products and services that are international
in scope. The registered mark, HEALTHCARE DISTRIBUTION
MANAGEMENT ASSOCIATION, also connotes a feature or
characteristic of the identified goods and services.
Specifically, the mark connotes an association that
provides management of the distribution of healthcare
related goods and/or services. Thus, the two marks connote
or convey different features of goods and/or services in
the field of healthcare, and as a result, create different
commercial impressions. Therefore, the two marks cannot be
considered “the same” for purposes of Trademark Rule
2.41(b).
Because the marks are not the same, Trademark Rule
2.41(b) cannot be used to establish that HEALTHCARE
DISTRIBUTORS INTERNATIONAL has acquired distinctiveness as
a mark for any goods or services, let alone the goods for
Ser No. 78602188
9
which registration is now sought. Thus, it is unnecessary
to consider the relationship between the goods and services
for which the marks have been registered and the goods and
services identified in the application.2
Finally, we find that applicant’s proffered
disclaimer, in the alternative, of either DISTRIBUTORS or
DISTRIBUTORS INTERNATIONAL fails to overcome our above
finding that its applied-for HEALTHCARE DISTRIBUTORS
INTERNATIONAL mark is not the legal equivalent of its
previously registered mark HEALTHCARE DISTRIBUTION
MANAGEMENT ASSOCIATION. As a result, neither proposed
disclaimer would establish that the applied-for mark has
acquired distinctiveness under Trademark Act Section 2(f).

2 It is noted that the examining attorney does not argue that the
goods and services in applicant’s registration are unrelated to
the goods and services in the subject application. Nevertheless,
even if the marks were the same, we would find that the
registration is insufficient in and of itself to establish that
the distinctiveness of the registered mark for goods and services
identified thereby has transferred to the more broadly identified
Class 16 goods and Class 35 services as well as the additional
Class 44 services identified in this application. See, e.g., In
re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 869 (Fed.
Cir. 1985) (“[n]othing in the statute provides a right ipso facto
to register a mark for additional goods when items are added to a
company’s line or substituted for other goods covered by a
registration.”); In re Merrill Lynch, Pierce, Fenner, & Smith,
Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987) (prior
registration for specific services involving credit cards does
not automatically entitle applicant to a registration for broader
financial services); and Bausch & Lomb Inc. v. Leupold & Stevens
Inc., 6 USPQ2d 1475 (TTAB 1988) (preexisting registration of gold
ring device for rifle scopes insufficient to demonstrate that the
gold ring device has become distinctive of applicant’s binoculars
and spotting scopes).
Ser No. 78602188
10
Accordingly, applicant’s request in the alternative to
disclaim the above wording is denied.
In view of the foregoing, we find that the evidence of
acquired distinctiveness is insufficient to permit
registration of HEALTHCARE DISTRIBUTORS INTERNATIONAL for
the recited goods and services under Section 2(f).
Decision: The refusal to register is affirmed.