HealthStar, LLC

Trademark Trial and Appeal Board

Apr 5, 2019

EX (T.T.A.B. Apr. 5, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 5, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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HealthStar, LLC
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Serial No. 87634853

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Jeffrey H. Kamenetsky of Burr & Forman LLP,
for HealthStar, LLC.

Khanh M. Le, Trademark Examining Attorney, Law Office 116,
Christine Cooper, Managing Attorney.
_____

Before Zervas, Adlin and Heasley,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
HealthStar, LLC (“Applicant”) seeks registration on the Principal Register of the
standard character mark WE CONNECT. for “software development services,
namely, designing custom healthcare-specific solutions to increase efficiency,
improve quality and reduce improper payments by linking payers, patients and
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caregivers via tailored software available on a static electronic device, mobile
application and/or web-based platform” 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 use of Applicant’s mark is
likely to cause confusion with the registered mark for services
including the following International Class 42 services:
Design of computer hardware, software and peripherals for others;
computer consulting services; technical support services, namely,
computer diagnostic services, troubleshooting of computer hardware
and computer software problems; custom software and hardware
development; testing of software and hardware products for others;
design and testing of computer components, integrated circuits and
semiconductor devices for others; computer graphics design services;
updating of computer software for others; computer programming for
others; hosting of digital content on the internet and intranet; design
and maintenance of computer software for operating and monitoring
interactive and non-interactive electronic bulletin boards for
transmission of messages among computer users concerning computer
hardware, computer software, computer graphics, information
technology, multimedia technology, consumer electronics, robotics,
business computing and environmentally-friendly computing.2

VIA Technologies, Inc. is identified as the owner of the cited registration.

1 Application Serial No. 87634853, filed on October 5, 2017 pursuant to Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), asserting first use and first use in commerce in April
2017. The period is part of the mark.
2 Registration No. 3510046, registered September 30, 2008 (renewed). The registration
includes this description of the mark: “[t]he mark consists of the word ‘VIA’ and single oval
halo design around the word ‘VIA’ in blue color. The tagline ‘WE CONNECT’ is in black color.”
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After the refusal was made final, Applicant requested reconsideration and
appealed to this Board. Reconsideration was denied, proceedings were resumed and
Applicant and the Examining Attorney filed briefs. We affirm the refusal to register.
I. Evidentiary Issues
Applicant filed several exhibits with its appeal brief and the Examining Attorney
has objected to our consideration of this evidence. The Examining Attorney’s objection
is sustained. See Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d) (“The record in the
application should be complete prior to the filing of an appeal. Evidence should not
be filed with the Board after the filing of a notice of appeal.”); TRADEMARK TRIAL AND
APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1203.02(e) and § 1207.01 (June
2018) and authorities cited therein. Applicant’s arguments regarding its untimely
evidence hence do not have evidentiary support and are not persuasive.
In addition, Applicant’s Office Action response filed March 15, 2018, request for
reconsideration filed October 5, 2018 and brief refer to several web addresses or
hyperlinks different from those displayed on the exhibits submitted with its brief.
Applicant failed to provide copies of the actual webpages with those responses and
the Examining Attorney has not objected to the inclusion of the web addresses or
hyperlinks in the brief or in Applicant’s prior submissions.
The mere listing of a web address or hyperlink is insufficient to make the
webpages associated with that address or hyperlink of record. In re HSB Solomon
Assocs., LLC, 102 USPQ2d 1269, 1274 (TTAB 2012) (“a reference to a website’s
internet address is not sufficient to make the content of that website or any pages
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from that website of record”). Even though the Examining Attorney has waived any
objection she may have to the inclusion of the web address or hyperlink in the brief,
we cannot consider webpages that are not properly submitted, and we do not visit
webpages that are not properly made of record. Id. Therefore, we have given the web
addresses and hyperlinks no further consideration.3
II. 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
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.

3 Even if we were to have substantively considered them, it would not affect our decision
since, as discussed infra, recitations of services cannot be limited by extrinsic evidence.
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Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 94 USPQ2d 1257, 1259
(Fed. Cir 2010)).
a. The Services and Trade Channels
Registrant’s recitation of services includes “design of computer … software … for
others” and “custom software … development.” This language is presumed to
encompass all services of the nature and type described. In re Elbaum, 211 USPQ
639, 640 (TTAB 1981) (“where the goods in a cited registration are broadly described
and there are no limitations in the identification of goods as to their nature, type,
channels of trade or classes of purchasers, it is presumed that the scope of the
registration encompasses all goods of the nature and type described, that the
identified goods move in all channels of trade that would be normal for such goods,
and that the goods would be purchased by all potential customers.”). Because
Registrant’s services are broadly described and not restricted to any particular type
of software, Registrant’s identification must be read to encompass Applicant’s
narrower services. Applicant’s argument that the services are not related because
Registrant’s services are not in the field of healthcare is therefore not persuasive.4
We hence agree with the Examining Attorney that the services in the application and
registration overlap. They are legally identical.5

4 Applicant’s brief at 16, 7 TTABVUE 18.
5 It is sufficient if likelihood of confusion is found with respect to use of a mark in connection
with any service within a recitation of services in a particular class. Tuxedo Monopoly, Inc.
v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
Serial No. 87634853
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Because Applicant’s services are legally identical to those of Registrant, we must
presume that the trade channels and customers are also identical. In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). Am. Lebanese Syrian Assoc.
Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011);
In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994). These two du Pont
factors favor a finding of likelihood of confusion.
b. The Marks
In any likelihood of confusion determination, the marks are compared in their
entireties for similarities in appearance, sound, connotation, and commercial
impression. In re Viterra Inc., 101 USPQ2d at 1908. Where the services are legally
identical, as they are in this case, the degree of similarity between the marks required
to support a finding of likelihood of confusion is not as great as in the case of diverse
services. See In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016)
(citing Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721); United
Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014) (quoting
Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698,
1701 (Fed. Cir. 1992)).
The Examining Attorney argues that this case is similar to In re The U. S. Shoe
Corp., 229 USPQ 707 (TTAB 1985), involving the applied-for mark CAREER IMAGE
and the registered mark . In finding the marks confusingly similar,
the Board stated:
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Applicant’s mark consists solely of two thirds of registrant’s mark. In
registrant’s mark, “CREST CAREER IMAGES,” the word “CREST”
appears in larger letters, alone, above “CAREER IMAGES”, which is in
different style letters. “CAREER IMAGES” comes across as a single,
unified component of the mark and “CREST” as a separate part of the
mark, perhaps a house mark. Applicant’s mark would appear to
prospective purchasers to be a shortened form of registrant’s mark. The
marks are similar in sound, meaning and appearance because the words
in applicant’s marks are virtually the same as the words making up one
element of registrant’s mark.
Id. at 709. In addressing the argument that the marks are not similar because
“CREST” dominates the registered mark and is absent from the applied-for mark, (as
well as the strength of the term “CAREER” as a trademark for clothes), the Board
added:
“CAREER IMAGES” is clearly one unitary component of registrant’s
mark. Whether “CREST” dominates the mark is not at issue. Applicant
has not appropriated “CREST”; rather, it has adopted as its mark almost
the same thing as the “CAREER IMAGES” portion of registrant’s mark.
It is because of the similarities between “CAREER IMAGE” and
“CAREER IMAGES” that the marks have similar sounds, appearances
and connotations.

Id.
Applicant distinguishes U.S. Shoe from this case, claiming, inter alia, that the
differences between the two portions of the registered CREST CAREER IMAGES
mark are not as “stark” as the differences between Applicant’s and Registrant’s
marks. Here, Applicant contends, the size of VIA “when coupled with the colored,
stylized font, and halo is dramatic.”6 In addition, Applicant maintains that “Crest”
was not the name of the cited registration’s owner in U.S. Shoe, whereas VIA is

6 Reply at 7, 10 TTABVUE 9.
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Registrant’s name; and that prospective purchasers would ask for the services by the
name “Via” and not “Via we connect” or just “we connect.”7
Applicant also argues that “where the design element has a much larger font,
includes multiple colors, includes a distinctive halo design, and includes the actual
name of the Registrant, it is abundantly clear that greater weight should be given to
the design portion rather than the word portion, which is merely the tagline ‘we
connect.’”8 Applicant acknowledges that word elements are often given more weight
than designs because it is usually the word element that purchasers use to refer to or
request the services, but argues that in this case, Registrant’s mark is not a design
but is “wording,” specifically Registrant’s name.9
This case certainly is not analogous to those in which a mark includes wording
and a design that would not be articulated. See, e.g., Parfums de Coeur, Ltd. v. Lory
Lazarus, 83 USPQ2d 1012 (TTAB 2003), mentioned in the Examining Attorney’s brief
and in Applicant’s Request for Reconsideration. Registrant has included a stylized
form of its name in its mark, not an unpronounceable design, and the stylization is
not so great that the term VIA is indeterminable. VIA is substantially greater in size
and catches the eye immediately upon perceiving the mark.
However, we may not focus solely on this term; we must also consider the common
wording of the mark, WE CONNECT. The size of the slogan WE CONNECT in

7 Id. at 8, 10 TTABVUE 10.
8 Applicant’s brief at 4, 7 TTABVUE 6.
9 Id.
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Registrant’s mark is not so small as to be unnoticeable. In addition, Applicant’s mark
is displayed in standard characters, and hence is not limited in its depiction to any
particular font, lettering style or color. See In re Viterra, 101 USPQ2d at 1909;
Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-
59 (Fed. Cir. 2011). See also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d
1744, 1748 (Fed. Cir. 2017) (“Symbolic does not, and cannot, dispute that the mark, I
AM in standard character form, and the registrants’ marks, I AM in standard
character, typed, or stylized form, are pronounced the same way and, at a minimum,
legally identical.”); SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed.
Cir. 1983) (“[T]he argument concerning a difference in type style is not viable where
one party asserts rights in no particular display. By presenting its mark merely in a
typed drawing, a difference cannot legally be asserted by that party.”). It may use the
same coloring and lettering style as displayed in Registrant’s mark.
Applicant emphasizes that VIA is part of Registrant’s name. This does not help
Applicant; the Board stated long ago that typically “the use of [a] house mark or trade
name is insufficient to distinguish [a] product mark from an otherwise similar or
identical mark and hence to obviate a likelihood of confusion in trade.” In re C. P.
Leek & Sons, Inc., 141 USPQ 446, 447 (TTAB 1964) (citing Celanese Corp. of Am. v.
E. I. du Pont de Nemours & Co., 69 USPQ 69 (CCPA 1946) and B. Kuppenheimer &
Co., Inc. v. Kayser-Roth Corp., 140 USPQ 262 (CCPA 1964)).
Upon consideration of the foregoing, and because: (i) Applicant’s mark consists of
two thirds of Registrant’s mark; (ii) WE CONNECT comes across as a single, unified
Serial No. 87634853
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component of the mark and VIA and its design as a separate part of the mark, which
is a house mark; (iii) Applicant’s mark could appear to prospective purchasers to be
a shortened form of Registrant’s mark; and (iv) the words in Applicant’s mark are
virtually the same as the words making up one element of Registrant’s mark, we find
the marks to be more similar than dissimilar. See U.S. Shoe Corp., supra.
In sum, upon consideration of the marks as a whole, we find that the marks are
more similar than dissimilar. The du Pont factor regarding the similarity of the
marks also favors a finding of likelihood of confusion.10
c. Conclusion
We have considered all of the evidence properly in the record and the arguments
of the Examining Attorney and Applicant. In view of the legally identical services, as
well as the presumed identity of purchasers and trade channels, and the similarity
between the marks, we conclude that confusion is likely between Applicant’s mark
for “software development services, namely, designing custom healthcare-specific
solutions to increase efficiency, improve quality and reduce improper payments by
linking payers, patients and caregivers via tailored software available on a static
electronic device, mobile application and/or web-based platform” and Registrant’s
mark for its “design of … software” and “custom software … development” services.11

10 9 TTABVUE 5.
11 Given Applicant’s arguments about alleged “real world” differences between the services
at issue that are not reflected in the identifications of services, we emphasize that we must
“decide this ex parte appeal based on the information on the face of the cited registration; we
do not read in limitations.” In re Cook Medical Tech. LLC, 105 USPQ2d 1377, 1384 (TTAB
2012). We pointed out:
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Decision: The refusal to register is affirmed.

[A]pplicant was not without possible remedies here, including seeking a
consent from the owner of the cited registration, or seeking a restriction of the
registration under Section 18 of the Trademark Act, 15 U.S.C. § 1068. . . . A
party in applicant’s position can file a petition for cancellation of the cited
registration, requesting a restriction or modification of registrant’s description
of its mark on the basis that the description is “ambiguous or overly broad and
not specific to the mark actually used” in the marketplace. . . . Such a claim
can be used to modify overly broad identification of goods (for example,
“computer programs”). See IdeasOne Inc. v. Nationwide Better Health Inc., 89
USPQ2d 1952, 1954-55 (TTAB 2009), citing In re N.A.D. Inc., 57 USPQ2d 1872,
1874 (TTAB 2000).
Id.