Healthx, Inc.v.HealthX Management, LLC

Trademark Trial and Appeal Board

Nov 30, 2018

No. 91228556 (T.T.A.B. Nov. 30, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 30, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Healthx, Inc.
v.
HealthX Management, LLC
_____

Opposition No. 91228556
_____

Thomas A. Walsh of Ice Miller LLP
for Healthx, Inc.
Laura M. Konkel of Michael Best & Friedrich LLP
for HealthX Management, LLC.
_____

Before Lykos, Greenbaum and Larkin,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On October 14, 2015, HealthX Management, LLC (“Applicant”) filed an
application to register on the Principal Register the standard character mark
HEALTHX VENTURES (with VENTURES disclaimed) for “venture capital services,
namely, providing financing to emerging and start-up companies,” in International
Class 36.1

1 Application Serial No. 86787722, filed under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a), alleging February 1, 2015 as the date of first use anywhere and in commerce.
Opposition No. 91228556
- 2 -

Healthx, Inc. (“Opposer”) opposes registration of Applicant’s mark under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of likelihood of
confusion based on Opposer’s previously used and registered HEALTHX mark. In the
notice of opposition, Opposer pleaded ownership of the following registrations:
Registration No. 2290212 for the mark HEALTHX (typed
form)2 on the Principal Register for “providing an on-line
database in the field of health insurance,” in International
Class 36;3 and
Registration No. 4920593 for the mark HEALTHX
(standard characters) on the Principal Register for
“computer software for mobile devices, namely, software
for accessing databases and healthcare information,” in
International Class 9; “business services, namely,
providing business consultation and information to
healthcare insurance payers, healthcare insurance
brokers, health plans, employers, healthcare providers,
healthcare beneficiaries, third party administrators and
other business associates,” in International Class 35; and
“providing on-line non-downloadable software for
healthcare insurance payers, healthcare insurance
brokers, health plans, employers, third party
administrators, healthcare providers, health plan
beneficiaries and other business associates to provide
healthcare insurance information, healthcare insurance
services, share information and aggregate, organize and
present data from multiple sources; providing on-line non-
downloadable software for the management of databases
and the distribution of information,” in International Class
42.4
Opposer alleges in relevant part that,

2 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings;
the preferred nomenclature was changed to conform to the Madrid Protocol. See In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012); see also TRADEMARK
MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 807.03(i) (Oct. 2018).
3 Registered November 2, 1999; renewed.
4 Registered March 22, 2016.
Opposition No. 91228556
- 3 -

8. Upon information and belief, Applicant uses the
HEALTHX VENTURES mark in connection with investing
in software companies in the healthcare industry.
9. Opposer is a software company in the healthcare
industry.
10. Upon information and belief, Applicant uses the
HEALTHX VENTURES mark in connection with investing
in digital health companies.
11. Opposer is a digital health company.
12. Upon information and belief, Applicant uses the
HEALTHX VENTURES mark in connection with investing
in digital health solutions.
13. Opposer's goods and services include digital health
solutions.5
In its answer, Applicant admitted that Opposer is the owner of its pleaded
registrations;6 that “Applicant uses the HEALTHX VENTURES mark in connection
with investing in software companies in the healthcare industry”;7 and that
“Applicant uses the HEALTHX VENTURES mark in connection with investing in
digital health companies.”8 Applicant denied the remaining salient allegations in the
Notice of Opposition.

5 1 TTABVUE 5-6. Citations to the record throughout the decision include references to
TTABVUE, the Board’s online docketing system. The number preceding “TTABVUE”
corresponds to the docket entry number; the number(s) following “TTABVUE” refer to the
page number(s) of that particular docket entry. See, e.g., Turdin v. Trilobite, Ltd., 109
USPQ2d 1473, 1476 n.6 (TTAB 2014).
6 Answer ¶¶ 1 and 2; 4 TTABVUE 2-3.
7 Id. at ¶ 8; 4 TTABVUE 4.
8 Id. at ¶ 10; 4 TTABVUE 4.
Opposition No. 91228556
- 4 -

The case is now fully briefed. Opposer, as plaintiff in this proceeding, bears the
burden of establishing its standing and Section 2(d) claim by a preponderance of the
evidence. See Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1107 (TTAB 2007). For
the reasons explained below, we dismiss the opposition.
I. Evidentiary Objections
Before turning to the substance of Opposer’s claim, the Board will address the
parties’ evidentiary objections.
Opposer’s Objections
Opposer complains about the probative weight of third-party applications and
cancelled third-party registrations submitted by Applicant under notice of reliance.
Insofar as the applications and registrations were properly introduced into the record,
they have not been stricken. Opposer is correct, however, that the probative value of
an application is limited to showing that it was filed, and that a cancelled registration
is not evidence of anything except that the registration issued. See TRADEMARK TRIAL
AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) (June 2018) §§ 704.03(b)(1)(A)
and 704.03(b)(2) and cases cited therein. We have kept these principles in mind in
making our determination.
Opposition No. 91228556
- 5 -

Applicant’s Objections9
1. Opposer’s Rebuttal Notice of Reliance
Applicant objects to Opposer’s rebuttal notice of reliance filed on February 15,
2018 on both substantive and procedural grounds.10 For the reasons explained below,
Applicant’s objection on procedural grounds is sustained.
As per the Board’s December 6, 2017 order, the deadline for Opposer to submit
rebuttal disclosures was reset to February 15, 2018; Opposer’s 15-day rebuttal period
was reset to open on March 2, 2018 and close on March 17, 2018.11 A party may not
take testimony or present evidence outside of its assigned testimony period, except
by stipulation of the parties approved by the Board, or, on motion, by Board order.
Trademark Rule 2.121(a), 37 C.F.R. § 2.121(a). See also Trademark Rule 2.123(k), 37
C.F.R. § 2.123(k) (“Evidence not obtained and filed in compliance with these sections
will not be considered.”). Insofar as Opposer’s rebuttal evidence was submitted on
February 15, 2018, which was the deadline for Opposer’s rebuttal disclosures but
prior to the opening of its assigned rebuttal period, the evidence is untimely and will

9 Applicant lodges specific complaints about the probative value of each of the third-party
registrations submitted by Opposer under notice of reliance. Applicant’s concerns are
addressed in detail later in this opinion.
10 Opposer miscaptioned the filing as “Opposer’s Rebuttal Disclosures.” In an attempt to
counter Applicant’s objection, Opposer continues to erroneously assert that the submission
consists of rebuttal disclosures. Pretrial rebuttal disclosures name any witness(es) from
whom a party intends to take testimony and provide certain identifying information. See
Trademark Rule 2.121(e), 37 C.F.R. § 2.121(e), and Fed. R. Civ. P. 26(a)(3). It is clear that
Opposer’s submission constitutes a notice of reliance on certain documents. See Trademark
Rule 2.122(g), 37 C.F.R. § 2.122(g) (“Notices of reliance”). Opposer’s captioning of the
submission as “Rebuttal Disclosures” does not make them so; rather we are guided by the
submission’s actual substance.
11 14 TTABVUE 7.
Opposition No. 91228556
- 6 -

not be considered. See, e.g., Baseball Am. Inc. v. Powerplay Sports, 71 USPQ2d 1844,
1846 n.8 (TTAB 2004) (documentary evidence submitted outside assigned testimony
period given no consideration). Applicant’s substantive objections are therefore moot,
and for this reason, need not be considered.
2. Hearsay Objection - Internet Printouts
Applicant objects on hearsay grounds to certain statements Opposer relies upon
from Internet materials (e.g. websites, social media posts, and online publications).12
Publicly available Internet materials are admissible under a notice of reliance in the
same manner as a printed publication in general circulation, so long as the date the
Internet materials were accessed and their source (e.g., URL) are provided.
Trademark Rule 2.122(e)(2), 37 C.F.R. § 2.122(e)(2). See Safer, Inc. v. OMS Invs., Inc.,
94 USPQ2d 1031 (TTAB 2010) (changing Board practice regarding the admissibility
of Internet evidence). Although these Internet materials are admissible for what they
show on their face, their contents are hearsay as per Federal Rules of Evidence 801
and 802 to the extent that they are offered to prove the truth of the matters asserted
therein. See Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1117
n.7 (TTAB 2009) (printed publications made of record by notice of reliance are
admissible and probative only for what they show on their face, not for the truth of

12 Trademark Rule 2.122(a), 37 C.F.R. § 2.122(a) provides that “unless the parties otherwise
stipulate, the rules of evidence for proceedings before the Trademark Trial and Appeal Board
are the Federal Rules of Evidence, the relevant provisions of the Federal Rules of Civil
Procedure, the relevant provisions of Title 28 of the United States Code, and the provisions
of this part. When evidence has been made of record by one party in accordance with these
rules, it may be referred to by any party for any purpose permitted by the Federal Rules of
Evidence.”
Opposition No. 91228556
- 7 -

the matters contained therein, unless a competent witness has testified to the truth
of such matters); see also 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1717 n.2 (TTAB
2007) (materials made of record by notice of reliance under Trademark Rule 2.122(e)
not admissible for the truth of the matters contained therein, unless a competent
witness has testified to the truth of such matters); Midwest Plastic Fabricators Inc.
v. Underwriters Labs. Inc., 12 USPQ2d 1267, 1270 n.5 (TTAB 1989) (annual report
in evidence only for what it showed on its face), aff’d, 906 F.2d 1568, 15 USPQ2d 1359
(Fed. Cir. 1990). Insofar as none of the exceptions to the rule against hearsay apply,
we cannot consider the submissions to prove the truth of any matter stated therein.
“However, such materials are frequently competent to show, on their face, matters of
relevance to trademark claims (such as public perceptions), regardless of whether the
statements are true or false.” Harry Winston, Inc. v. Bruce Winston Gem Corp., 111
USPQ2d 1419, 1428 (TTAB 2014). Thus, while we have not stricken any of the
objected-to materials, in making our decision, we have accorded them only whatever
probative value they merit.
3. Lack of Foundation Objection – Social Media Accounts
Applicant argues that Opposer attributes to Applicant statements on Applicant’s
Facebook and Twitter accounts without providing any foundation that these are
Applicant’s social media accounts or that Applicant controlled the content. Opposer
counters that because Applicant submitted screenshots of its Twitter page as a
specimen to show use of the HEALTHX VENTURES mark in commerce during
prosecution of its application, Applicant cannot now claim that its Twitter page
Opposition No. 91228556
- 8 -

cannot be attributed to it and therefore that the Board should disregard the
statements made therein.
Applicant’s objection is overruled to the extent that Applicant is precluded from
objecting to excerpts from Applicant’s Twitter page that Applicant previously
submitted as its specimen of use for the involved application. However, insofar as no
foundational testimony was offered for statements purportedly made by Applicant in
its Facebook account, that objection is sustained.
II. The Record
The record includes the pleadings, and pursuant to Trademark Rule 2.122(b), 37
C.F.R. § 2.122(b), Applicant’s application file.13
Opposer’s Evidence
Opposer introduced the testimony affidavit of Sean Downs, Chief Executive
Officer for Opposer (“Downs Affidavit”). Opposer also submitted a notice of reliance
on the following documents:
Copies of Opposer’s pleaded Registration Nos. 2290212 and
4920593 showing current status and title as well as each
registration’s file history obtained from the USPTO
Trademark Status and Document Retrieval (“TSDR”)
database;
Web page excerpts from Opposer’s website
http://healthx.com;
Web page excerpts from Applicant’s website
http://healthxventures.com;

13 Opposer’s submission of the involved application under notice of reliance was therefore
superfluous.
Opposition No. 91228556
- 9 -

Web page excerpts from Applicant’s “Portfolio Companies’
Web Sites/Publications” Agathos, Ensodata, NarrativeDx,
Moving Analytics and Redox;
Articles from the online versions of the publications Forbes
and Business Insider as well as the CB Insights blog;
Excerpts from the third-party websites of Comcast
Ventures, Telstra Ventures, Pfizer Venture Investments,
GE Ventures, Microsoft Ventures, Salesforce Ventures and
Qualcomm Ventures; and
Copies of third-party registrations obtained from the TSDR
database.
Applicant’s Evidence
Applicant introduced the testimony declaration of Mark Bakken, Applicant’s
founder and Managing Partner (“Bakken Declaration”).14 In addition, Applicant
submitted a notice of reliance on copies of third-party applications and registrations
obtained from the TSDR database as well as corresponding excerpts from third-party
websites.
III. Standing
Turning now to the merits, we begin our analysis with the issue of Opposer’s
standing to oppose registration. Opposer must prove its standing by showing a real
interest in the outcome of the proceeding and a reasonable basis for believing that it
would suffer damage if the mark is registered. See 15 U.S.C. § 1063; Empresa Cubana
Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014),
cert. denied, 135 S. Ct. 1401 (2015). A “real interest” is a “direct and personal stake”

14 Opposer’s motion (filed August 3, 2017) to strike the Bakken Declaration was denied on
December 6, 2017. 14 TTABVUE.
Opposition No. 91228556
- 10 -

in the outcome of the proceeding. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023, 1026 (Fed. Cir. 1999). Opposer’s pleaded registrations for a mark similar to
Applicant’s, status and title copies of which are of record, establish its standing. See
Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727-28
(Fed. Cir. 2012); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000).
IV. Section 2(d) Claim
Priority
To prevail on a likelihood of confusion claim, a party must first prove that it owns
“a mark registered in the Patent and Trademark Office or a mark or trade name
previously used in the United States … and not abandoned ….” Trademark Act
Section 2(d), 15 U.S.C. § 1052(d). Because, as noted above, Opposer properly made of
record its valid and subsisting pleaded registrations, priority is not at issue for the
mark and the goods and services identified therein. See King Candy, Inc. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). See also Coach
Servs., 101 USPQ2d at 1727-28.
Likelihood of Confusion
The remaining issue in this case is likelihood of confusion.
We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See
also, In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
Opposition No. 91228556
- 11 -

2003). “Not all of the du Pont factors are relevant to every case, and only factors of
significance to the particular mark need be considered.” In re Mighty Leaf Tea, 601
F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). For example, the Board can “focus
… on dispositive factors, such as similarity of the marks and relatedness of the goods
[and services].” Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d
1375, 1380 (Fed. Cir. 2002) (citation omitted). These factors and the other relevant
du Pont factors are discussed below.
1. The similarity or dissimilarity of the marks
Our analysis cannot be predicated on dissection of the involved marks. See Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161 (Fed. Cir. 2014). Rather, we are obliged to consider the marks in their entireties.
Id. See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233,
234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered
piecemeal; rather, it must be considered as a whole in determining likelihood of
confusion.”). Nonetheless, there 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 a consideration of the marks in their entireties. Stone
Lion, 110 USPQ2d at 1161.
Applicant’s mark HEALTHX VENTURES incorporates the entirety of Opposer’s
mark HEALTHX. Likelihood of confusion is often found where one party’s mark
incorporates the entirety of the other. In re Mighty Tea Leaf, 601 F.3d 1342, 94
USPQ2d 1257, 1260 (Fed. Cir. 2010); The Wella Corp. v. California Concept Corp.,
558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977); Hunter Indus., Inc. v. Toro Co., 110
Opposition No. 91228556
- 12 -

USPQ2d 1651, 1660-61 (TTAB 2014); Johnson Pub’g Co. v. Int’l Dev. Ltd., 221 USPQ
155, 156 (TTAB 1982) (EBONY for cosmetics and EBONY DRUM for hairdressing
and conditioner). The dominant portion of Applicant’s mark is the shared, coined term
HEALTHX, which appears first. Consumers are generally more inclined to focus on
the first word, prefix, or syllable in any trademark or service mark. See Hunter Indus.,
110 USPQ2d at 1660; Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) (stating that “it is often the first part of a mark which is most likely to
be impressed upon the mind of a purchaser and remembered”); see also Palm Bay
Imps. Inc. v. Veuve Cliquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005) (“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 Am., 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks,
consumers will first notice the identical lead word).
We acknowledge that the addition of the word VENTURES in Applicant’s mark
HEALTHX VENTURES results in visual and phonetic differences. However, the
disclaimed term VENTURES has little, if any, source-identifying capacity because it
describes Applicant’s venture capital services. See Nat’l Data Corp., 753 F.2d 1056,
224 USPQ 749, 752 (Fed. Cir. 1985). Consumers are more likely to look to the coined
term HEALTHX as identifying the source of the venture capital services, and perhaps
view the additional term VENTURES as reflecting a line extension of the services
emanating from the source known as HEALTHX.
Opposition No. 91228556
- 13 -

Overall, the marks are similar in sound, appearance, connotation and commercial
impression. Accordingly, this du Pont factor weighs in favor of finding a likelihood of
confusion.
2. The fame and strength of Opposer’s mark
In determining a mark’s strength under du Pont, “we consider both inherent
strength, based on the nature of the mark itself, and commercial strength or
recognition.” Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1345
(TTAB 2017) (citation omitted).
The inherent or conceptual strength of Opposer’s mark is not at issue. Opposer’s
coined HEALTHX mark is inherently distinctive as evidenced by its registration on
the Principal Register without a claim of acquired distinctiveness under Section 2(f)
of the Trademark Act. See Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d 1881,
1889 (TTAB 2006). We have no evidence of either third-party use or registrations of
marks comprised of HEALTHX for the same or similar goods and services that might
demonstrate the weakness of the mark as a source identifier. See Omaha Steaks Int’l
Inc. v. Greater Omaha Packing Co., ___ F.3d ____, 128 USPQ2d 1686, 1694-95 (Fed.
Cir. 2018); Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New
Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015);
and Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674
(Fed. Cir. 2015).
We turn now to an analysis of commercial strength or fame. The commercial
strength or fame of a mark is not a binary factor in the context of a likelihood of
confusion analysis. Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857
Opposition No. 91228556
- 14 -

F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (“The TTAB applied a legally
incorrect standard in applying an all-or-nothing measure of ‘fame,’ more akin to
dilution analysis.”). Rather, likelihood of confusion fame “varies along a spectrum
from very strong to very weak.” Palm Bay Imps., 73 USPQ2d at 1694 (quoting In re
Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003)). Famous marks
“enjoy wide latitude of legal protection” and are “more attractive as targets for would-
be copyists.” Id.
In the context of a likelihood of confusion analysis, commercial strength or fame
may be measured indirectly by the volume of sales and advertising expenditures in
connection with the goods or services sold under the mark, and other factors such as
length of time of use of the mark; widespread critical assessments; notice by
independent sources of the goods or services identified by the marks; and the general
reputation of the goods or services. Weider Publ’ns, LLC v. D & D Beauty Care Co.,
109 USPQ2d 1347, 1354 (TTAB 2014), appeal dismissed per stipulation, No. 2014-
1461 (Fed. Cir. Oct. 10, 2014); see also Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d
1367, 63 USPQ2d 1303, 1308 (Fed. Cir. 2002) (recognizing indirect evidence as
appropriate proof of strength).
In terms of fame or commercial strength, Opposer’s witness Mr. Downs testified
that Opposer has invested “significant, [sic] time, effort, and money, in promoting its
software and services” and has “established extensive and valuable goodwill” in the
HEALTHX mark.15 Mr. Downs failed, however, to testify to or authenticate any

15 Downs Affidavit ¶10; 6 TTABVUE 3.
Opposition No. 91228556
- 15 -

specific data to support these statements such as advertising expenditures, sales
figures or revenues generated under the HEALTHX mark. Opposer also asserts that
because it has over 180 customers for its software and services, its HEALTHX mark
is “widely known” as a source identifier for Opposer’s digital health solutions.16 In the
absence of any context for this number, we cannot accord Opposer’s HEALTHX mark
a high degree or, for that matter, any degree, of fame or commercial strength. Cf.
Omaha Steaks Int’l, 128 USPQ2d at 1690 at (noting that context for sales and
advertising figures may be provided by evidence of market share, the nature and
extent of mark owner’s marketing and promotional efforts, media coverage, and other
indicia of public recognition of a mark); see also Edwards Lifesciences Corp. v.
VigiLanz Corp., 94 USPQ2d 1399, 1408 (TTAB 2010) (“Some context in which to place
raw statistics may be necessary … (e.g., the substantiality of the sales or advertising
figures for comparable types of products or services))” (citing Bose, 63 USPQ2d at
1309). Thus, on this record, we have insufficient testimony or corroborating evidence
to make a determination regarding the fame or commercial strength of Opposer’s
mark, which is Opposer’s burden to establish.
In summary, Opposer’s HEALTHX mark is inherently distinctive and there is no
evidence bearing on the mark’s commercial strength or conceptual weakness. The
mark therefore is entitled to the normal scope of protection accorded inherently
distinctive marks. See Trademark Act Section 7(b); see also Tea Bd. of India v.
Republic of Tea Inc., 80 USPQ2d at 1889 (“A mark that is registered on the Principal

16 Id. at ¶17; 6 TTABVUE 4.
Opposition No. 91228556
- 16 -

Register is entitled to all Section 7(b) presumptions including the presumption that
the mark is distinctive and moreover, in the absence of a Section 2(f) claim in the
registration, that the mark is inherently distinctive for the goods.”). This factor
therefore is neutral.
3. The similarity or dissimilarity of the goods and services
We now assess the similarity or dissimilarity and nature of the parties’ respective
goods and services as they are identified in the application and Opposer’s
registrations. See Stone Lion, 110 USPQ2d at 1161; Octocom Sys. Inc. v. Hous.
Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also,
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004
(Fed. Cir. 2002). The goods and services need not be identical or even competitive to
find that they are related for purposes of our likelihood of confusion analysis, but
need only be “related in some manner and/or if the circumstances surrounding their
marketing [be] such that they could give rise to the mistaken belief that [the goods
and services] emanate from the same source.” Coach Servs., 101 USPQ2d at 1722
(quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). Evidence of
relatedness may include news articles or evidence from computer databases showing
that the relevant goods and services are used together or used by the same
purchasers; advertisements or other materials showing that the relevant goods and
services are advertised together or sold by the same manufacturer or dealer; or copies
of prior use-based registrations of the same mark for both an applicant’s goods and/or
services and the goods and/or services listed in the pleaded registrations. See, e.g., In
re Davia, 110 USPQ2d 1810, 1817 (TTAB 2014) (finding pepper sauce and agave
Opposition No. 91228556
- 17 -

sweetener related where evidence showed both were used for the same purpose in the
same recipes and thus consumers were likely to purchase the products at the same
time and in the same stores). The issue is not whether purchasers would confuse the
goods and services, but rather whether there is a likelihood of confusion as to their
source. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel
Inc., 223 USPQ 830, 831 (TTAB 1984).
As noted above, Applicant’s services are identified as
Venture capital services, namely, providing financing to
emerging and start-up companies in International Class
36.
Opposer’s goods and services as set forth in its registrations are
Computer software for mobile devices, namely, software for
accessing databases and healthcare information in
International Class 9;
Business services, namely, providing business consultation
and information to healthcare insurance payers,
healthcare insurance brokers, health plans, employers,
healthcare providers, healthcare beneficiaries, third party
administrators and other business associates” in
International Class 35; and
Providing on-line non-downloadable software for
healthcare insurance payers, healthcare insurance
brokers, health plans, employers, third party
administrators, healthcare providers, health plan
beneficiaries and other business associates to provide
healthcare insurance information, healthcare insurance
services, share information and aggregate, organize and
present data from multiple sources; providing on-line non-
downloadable software for the management of databases
and the distribution of information in International Class
42.
Opposition No. 91228556
- 18 -

To support its contention that Applicant’s services are related to Opposer’s goods
and services, Opposer made of record 13 third-party registrations. Use-based, third-
party registrations may have some probative value to the extent they may serve to
suggest that the goods and services are of a kind that emanate from a single source.
See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). However, as explained below,
the majority of these registrations have key deficiencies.
Five of the registrations are based on a foreign registration rather than use in
commerce. See Registration Nos. 4270217, 4721931, 4416573, and 4307309
(registered under Trademark Act Section 66(a), 15 U.S.C. § 1141f(a), with no Section
71 affidavit or declaration of continuing use filed) and Registration No. 4958040
(registered under Trademark Act Section 44(e), 15 U.S.C. § 1126(e), with no Section
8 affidavit or declaration of continuing use filed). Third-party registrations not based
on use in U.S. commerce lack probative value in showing that the involved goods and
services may emanate from the same source. In re 1st USA Realty Prof’s. Inc., 84
USPQ2d 1581, 1583 (TTAB 2007).
Although Registration No. 4416573 is listed in Opposer’s notice of reliance,
Opposer failed to submit either a plain copy of the registration or a printout from the
Office’s TSDR electronic database. See Trademark Rules 2.122(e) and (g), 37 C.F.R.
§§ 2.122(e) and (g). Cf. Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB
2012) (listing of third-party marks downloaded from Office database does not make
Opposition No. 91228556
- 19 -

registrations of record). Because this registration was not properly made of record, it
has been given no consideration.
Many of the other third-party registrations do not cover both Applicant’s services
and at least one of Opposer’s goods or services. Unless a third-party registration lists
both Opposer’s goods and services and Applicant’s services, the registration fails to
support Opposer’s contention that the involved goods and services are related. See,
e.g., In re W.W. Henry Co., 82 USPQ2d 1213, 1215 (TTAB 2007) (“[U]pon review, we
find that none of the registrations appear to include goods of the type listed in
applicant’s application and the cited registration . . . Thus, the third-party
registrations are insufficient to show that applicant’s and registrant’s goods are of a
type that may emanate from a single source”). Registration Nos. 3238547 and
4871125 do not include Applicant’s “venture capital services, namely, providing
financing to emerging and start-up companies” or the equivalent thereof, a critical
omission. While Registration No. 4568690 includes “venture capital financing,”
“computer game software” in International Class 9 is neither identical to nor even
remotely related to any of Opposer’s goods and services. The same holds true for
Registration No. 4001010 for “computer programs recorded on software designed for
operation, management and analysis for use in construction and automated
manufacturing, computer aided design and computer aided manufacturing,” in
International Class 9, which is neither similar nor identical to Opposer’s “computer
software for mobile devices, namely, software for accessing databases and healthcare
information” which clearly is used in an entirely different industry.
Opposition No. 91228556
- 20 -

The services identified in Registration Nos. 4758247 and 4759248 as “providing
temporary use of web-based software applications for use in monitoring medical
patient safety and patient and medical event recording, tracking and reporting,
namely, monitoring patient heart rates, patient falls, facilities, and clinician response
times” in International Class 42 could potentially be construed as falling within the
broader category of Opposer’s “[p]roviding on-line non-downloadable software for the
management of databases and the distribution of information.” However, both of
these registrations are owned by the same entity, making them redundant. See Albert
Trostel & Sons Co., 29 USPQ at 1785. In addition, because the registrations cover a
wide variety of goods and services falling in eight different international classes, their
probative value is diminished. Cf. Mucky Duck, 6 USPQ2d at 1470 n.6 (dismissing
value of third-party registrations issued to “owners of a large department store and
an amusement or theme center, respectively, where a wide variety of goods and
services are sold).
This leaves only two potentially relevant third-party registrations.17 As to
Registration No. 3786543, the closest services to any of Opposer’s goods or services
are “business management; business administration.” While these services bear a
passing resemblance to “business services, namely, providing business consultation
and information to healthcare insurance payers,” they are in fact distinct. Likewise,
while Registration No. 3091811 includes “business management consulting”

17 Both were registered under Section 44 of the Trademark Act with Section 8 declarations of
continuing use having been filed.
Opposition No. 91228556
- 21 -

unrestricted as to any particular field, there is a difference between these services
and Opposer’s services noted above.
In sum, Opposer’s third-party registrations are of very limited probative value in
supporting Opposer’s position.
Opposer also relies on the following online publications and third-party websites
as proof that it is common for companies to use the same or substantially the same
mark for software and related services in the healthcare field, as well as for their
venture capital services.
Rita Costa Waite, The Value of Corporate Venture Arms,
FORBES, Sept. 7, 2016 (www.forbes.com): “… leading
companies think about the value of a corporate venture
arm,” and this has given “rise in corporate venture
capital.”18
Lydia Ramsey, Silicon Valley is getting interested in
healthcare – here’s why that could be a good thing,
BUSINESS INSIDER, May 22, 2017
(www.businessinsider.com): “Major tech companies are
eyeing the healthcare world, … ”19
The 55 Most Active Corporate VC Firms Globally, CB
Insights Blog, March 7, 2017 (www.cbinsights.com): Cited
to generally for the proposition that venture capital
investments are common in digital health.20
Excerpt from GE Ventures website (www.geventures.com)
cited for the general proposition that General Electric (GE),
which is traditionally known as a technology company, is
also well known for venture capital investments in digital
health, and under the GE name.21

18 Opposer’s Notice of Reliance at 5 TTABVUE 395-96.
19 Id. at 5 TTABVUE 427-28.
20 Id. at 5 TTABVUE 413-26.
21 Id. at 5 TTABVUE 485.
Opposition No. 91228556
- 22 -

Excerpt from Pfizer website (www.pfizer.com) cited for the
proposition that Pfizer, which is traditionally known as a
drug manufacturer, also performs venture capital services
under the name “Pfizer Venture Investments,” and
considers investments in a “broad array of healthcare
related areas, including . . . healthcare IT.”22
As discussed above in our evidentiary ruling, although these materials are
admissible for what they show on their face, they are inadmissible to prove the truth
of the statements made in them because those statements are hearsay under Rules
801(c)(2) and 802 of the Federal Rules of Evidence when offered for that purpose. See
Syngenta Crop., 90 USPQ2d at 1117 n.7. While such Internet evidence could
potentially be probative of consumer exposure to the offering of the relevant goods
and services, the general statements quoted above and the sparse number of
examples are insufficient to show that consumers are typically exposed to venture
capital services and any of Opposer’s goods and services being marketed under the
same mark or originating from the same source.
Opposer also argues that the companies to which Applicant provides venture
capital services include those that design and provide software in the healthcare
industry. There is no admissible evidence supporting this claim. As the Federal
Circuit recently reiterated, “Attorney argument is no substitute for evidence.” Zheng
Cai, d/b/a Tai Chi Green Tea Inc. v. Diamond Hong, Inc., ___ F.3d ___ , 127 USPQ2d
1797, 1799 (Fed. Cir. 2018) (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d
1276, 1284 (Fed. Cir. 2005)). However, even if there were such evidence, this alone

22 Id. at 5 TTABVUE 480.
Opposition No. 91228556
- 23 -

does not make the parties’ goods and services per se related. See, e.g., Calypso Tech.
Inc. v. Calypso Capital Mgmt. LP, 100 USPQ2d 1213, 1221 (TTAB 2011) (CALYPSO
CAPITAL MANAGEMENT equity investment management and fund services not
related to CALYPSO computer software used by financial institutions because there
was no evidence that the involved software and investment services were “ever
offered by a single company”).
Considering Opposer’s evidence as a whole, we find that this du Pont factor
weighs heavily against finding a likelihood of confusion. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.”).
4. The established, likely-to-continue channels of trade and classes of
consumers
To determine the established, likely-to-continue channels of trade and classes of
consumers, we must look to the goods and services as identified in the involved
application and registrations, not to any extrinsic evidence. Stone Lion, 110 USPQ2d
at 1162.
Opposer invokes Viterra, asserting that because there are no restrictions in the
involved application and registrations, the identified goods and services are
“presumed to travel in the same channels of trade to the same class of purchasers.”
101 USPQ2d at 1908 (quoting Hewlett-Packard, 62 USPQ2d at 1005). Opposer’s
reliance on Viterra is misplaced. The legal presumptions set forth in Viterra only
apply when the goods and/or services are identical or legally identical and
Opposition No. 91228556
- 24 -

unrestricted with respect to categories of purchasers and/or channels of trade. Id.
(“Viterra concedes that the goods at issue are identical . . . [and] it is well established
that, ‘absent restrictions in the application and registration, goods and services are
presumed to travel in the same channels of trade to the same classes of purchasers”)
(internal quotation omitted). Such is not the case here. Based on the identifications
themselves, we find that the established, likely-to-continue channels of trade and
classes of consumers are mutually exclusive. Applicant’s “venture capital services,
namely, providing financing to emerging and start-up companies” are limited by their
terms to emerging and start-up company customers. By contrast, Opposer’s
customers for its International Class 35 “business services, namely, providing
business consultation and information” are restricted to “healthcare insurance
payers, healthcare insurance brokers, health plans, employers, healthcare providers,
healthcare beneficiaries, third party administrators and other business associates.”
Likewise, Opposer’s International Class 42 software as a service (“SAAS”) “providing
on-line non-downloadable software … to provide healthcare insurance information,
healthcare insurance services, share information and aggregate, organize and
present data from multiple sources” is specifically limited to “healthcare insurance
payers, healthcare insurance brokers, health plans, employers, third party
administrators, healthcare providers, health plan beneficiaries and other business
associates.” Indeed, Applicant confirmed that its customers for its venture capital
services do not include healthcare providers, health networks, healthcare insurers,
healthcare payers, healthcare insurance payers, healthcare insurance brokers,
Opposition No. 91228556
- 25 -

health plans, employers providing healthcare, healthcare beneficiaries, third-party
administrators, or health plan beneficiaries, or health insurance services to
employees.23
Opposer’s International Class 9 “computer software for mobile devices, namely,
software for accessing databases and healthcare information” and International
Class 42 SAAS of “providing on-line non-downloadable software for the management
of databases and the distribution of information” are unrestricted, meaning that we
must presume that these goods and services move in all normal channels of trade and
are available to all potential classes of ordinary consumers of these particular goods
or services. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1261 (Fed. Cir. 2011) (where there are no limitations as to channels
of trade or classes of purchasers in either the involved application or registration, we
must presume that the identified goods and services move in all channels of trade
normal for such goods or services and are available to all potential classes of ordinary
consumers of such goods or services). See also Canadian Imperial Bank of Commerce
v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987); Toys “R”
Us, Inc. v. Lamps R Us, 219 USPQ 340, 343 (TTAB 1983). While theoretically the
ordinary purchasers for these goods and services could include emerging and start-
up companies, Opposer failed to introduce evidence to support such a finding.
Opposer’s witness Mr. Downs testified that the consumers of Opposer’s software and
SAAS also are “health networks, health insurers, primary health networks,

23 Bakken Declaration ¶ 9, 7 TTABVUE 3.
Opposition No. 91228556
- 26 -

commercial health plans, third-party administrators, commercial carriers and
hospitals,”24 yet Opposer failed to introduce evidence showing that these entities
include “emerging and start-up companies.” Thus, the prospective consumers of
Applicant’s services and Opposer’s goods and services fall in distinct, non-overlapping
categories. This du Pont factor therefore weighs against finding a likelihood of
confusion.
5. Conditions of sale
Next we consider the conditions under which the goods and services are likely to
be purchased, e.g., whether on impulse or after careful consideration, as well as the
degree, if any, of sophistication of the consumers. Purchaser sophistication or degree
of care may tend to minimize likelihood of confusion. See, e.g., Primrose Ret. Cmtys.,
LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1039 (TTAB 2016)
(finding that, “even in the case of the least sophisticated purchaser, a decision as
important as choosing a senior living community will be made with some thought and
research, even when made hastily”).
We find that the normal classes of purchasers of Applicant’s services and
Opposer’s goods and services would include both ordinary consumers who likely
would exercise only a normal degree of care, as well as somewhat more knowledgeable
and sophisticated consumers such as “healthcare insurance payers, healthcare
insurance brokers, health plans, employers, healthcare providers, … third party
administrators and other business associates,” who perhaps might exercise a greater

24 Downs Affidavit ¶ 11; 6 TTABVUE 4.
Opposition No. 91228556
- 27 -

degree of care in purchasing Opposer’s services. See, e.g., Amalgamated Bank of New
York v. Amalgamated Trust & Sav. Bank, 842 F.2d 1270, 6 USPQ2d 1305, 1308 (Fed.
Cir. 1988); First USA Realty Prof’ls., 84 USPQ2d at 1587; Crocker Nat’l Bank v.
Canadian Imperial Bank of Commerce, 228 USPQ 689, 690 (TTAB 1986); Freedom
Savs. & Loan Ass’n v. Am. Fidelity Assurance Co., 222 USPQ 71, 74 (TTAB 1984). It
is settled that “the applicable standard of care is that of the least sophisticated
consumer.” Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1027 (TTAB 2009).
See also Stone Lion, 110 USPQ2d at 1163 (“the Board properly considered all
potential investors for the recited investment services, including ordinary consumers
seeking to invest in services with no minimum investment requirement.”). Given this
mix of consumers, we deem this factor neutral. See, e.g., Lincoln Nat’l Corp. v.
Anderson, 110 USPQ2d 1271, 1283 n.18 (TTAB 2014) (where relevant consumers of
banking, financial planning, and investment services consisted of both ordinary and
knowledgeable and sophisticated consumers, “this factor certainly would not weigh
significantly in applicant’s favor. At most it is neutral in our overall likelihood of
confusion determination based on all of the relevant du Pont factors.”).
6. Expansion of trade doctrine
Opposer contends that Applicant’s venture capital services fall within Opposer’s
zone of expansion. The expansion-of-trade doctrine typically is applied to establish
priority of use where the first user of a mark with respect to particular goods or
services argues that it possesses superior rights in the mark as against subsequent
users of the same or similar mark for any goods or services which purchasers might
reasonably expect to emanate from the senior user in the normal expansion of its
Opposition No. 91228556
- 28 -

business under the mark. See Orange Bang, Inc. v. Olé Mexican Foods, Inc., 116
USPQ2d 1102, 1119 (TTAB 2015); Gen. Mills Inc. v. Fage Dairy Processing Indus. SA,
100 USPQ2d 1584, 1598 (TTAB 2011), judgment set aside on other grounds, 110
USPQ2d 1679 (TTAB 2014).25
The only evidence Opposer points to in support of its expansion of trade argument
are the third-party registrations and publications offered on the second du Pont factor
and summarized above, which, as explained earlier, do not suggest that consumers
are conditioned to expect “venture capital services,” and “computer software” and
“business services” to emanate from a single source under the same mark. The
expansion of trade doctrine “requires a specific analysis that does not appreciably add
to our understanding of the relatedness of the goods [and services] in this case.” Id.
at 1598 n.28. The record is devoid of evidence sufficient to invoke the expansion of
trade doctrine.
7. Actual confusion
Opposer’s sole piece of evidence regarding this du Pont factor, an email
purportedly showing a single instance of actual confusion, was excluded in our
evidentiary ruling on Opposer’s untimely notice of reliance, and we have no

25 The factors to consider in applying the doctrine in this context are: (1) whether the second
area of business (that is, the subsequent user's area of business, into which the first user has
or potentially may expand) is a distinct departure from the first area of business (of the prior
user), thereby requiring a new technology or know-how, or whether it is merely an extension
of the technology involved in the first area of business; (2) the nature and purpose of the
goods or services in each area; (3) whether the channels of trade and classes of customers for
the two areas of business are the same, so that the goodwill established by the prior user in
its first area of business would carry over into the second area; and (4) whether other
companies have expanded from one area to the other. Mason Eng’g and Design Corp. v.
Mateson Chem. Corp., 225 USPQ 956, 961 (TTAB 1985).
Opposition No. 91228556
- 29 -

admissible evidence before us of actual confusion.
Mr. Bakken testified that Applicant has never received a third-party complaint
or objection concerning its use of the HEALTHX VENTURES mark and he is unaware
of any instances of actual confusion resulting from Applicant’s use of the HEALTHX
VENTURES mark.26 The absence of any reported instances of confusion is
meaningful only if the record indicates appreciable and continuous use by Applicant
of its mark for a significant period of time in the same markets as those served by
Opposer under its mark. Capital City Bank Grp., 94 USPQ2d at 1660; Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In other words, for
the absence of actual confusion to be probative, there must have been a reasonable
opportunity for confusion to have occurred. Barbara’s Bakery Inc. v. Landesman, 82
USPQ2d 1283, 1287 (TTAB 2007) (the probative value of the absence of actual
confusion depends upon there being a significant opportunity for actual confusion to
have occurred); Red Carpet Corp. v. Johnstown Am. Enter. Inc., 7 USPQ2d 1404,
1406-1407 (TTAB 1988); Central Soya Co., Inc. v. N. Am. Plant Breeders, 212 USPQ
37, 48 (TTAB 1981) (“the absence of actual confusion over a reasonable period of time
might well suggest that the likelihood of confusion is only a remote possibility with
little probability of occurring”). Mr. Downs testified that Opposer has been using its
HEALTHX mark in commerce since February 1998,27 while Mr. Bakken testified that

26 Bakken Declaration ¶¶ 12-13; 7 TTABVUE 4.
27 Downs Affidavit ¶ 4; 6 TTABVUE 2.
Opposition No. 91228556
- 30 -

Applicant has been using its HEALTHX VENTURES mark since February 1, 2015.28
With only three years of contemporaneous use, we find that the lack of any reported
instances of confusion is not particularly probative. Therefore, this factor is neutral.
8. Extent of potential confusion
Opposer, relying on the purported similarity of the involved goods and services
in overlapping trade channels to the same class of purchasers, argues that extent of
potential confusion is highly likely and not de minimis. Given our findings to the
contrary, we also deem this du Pont factor neutral.
9. Balancing the factors
Overall, Applicant’s HEALTHX VENTURES mark in standard characters is
similar in sound, appearance, connotation and commercial impression to Opposer’s
standard character HEALTHX mark. This factor supports a finding of a likelihood of
confusion. The record does not show that Opposer’s HEALTHX mark has any degree
of commercial strength that would entitle it to more than the normal scope of
protection to which any inherently distinctive mark is entitled. This factor is
accordingly neutral. We must balance our finding on the first du Pont factor against
our countervailing determinations that Applicant’s services are unrelated to any of
Opposer’s identified goods or services and are not marketed in the same established,
likely-to-continue channels of trade or classes of consumers. Weighing these factors,
we find confusion unlikely. In reaching this conclusion, we have carefully considered
all of the evidence pertaining to the relevant du Pont factors, as well as all of the

28 Bakken Declaration ¶ 3; 7 TTABVUE 2.
Opposition No. 91228556
- 31 -

parties’ arguments with respect thereto, including any evidence and arguments not
specifically discussed in this opinion. “‘We are not concerned with the mere
theoretical possibilities of confusion, deception or mistake or with de minimis
situations but with the practicalities of the commercial world, with which the
trademark laws deal.’” Elec. Design & Sales Inc. v. Elec. Data Sys. Corp., 954 F.2d
713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992) (quoting Witco Chem. Co. v. Whitfield
Chem. Co., Inc., 418 F.2d 1403, 164 USPQ 43, 44-45 (CCPA 1969)).
Accordingly, we find that although Opposer has proved its standing and priority,
it has failed to prove likelihood of confusion by a preponderance of the evidence.
Decision: The opposition is dismissed.