Holding Company of the Villages, Inc.

Trademark Trial and Appeal Board

Apr 14, 2014

No. 85596280 (T.T.A.B. Apr. 14, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 14, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Holding Company of the Villages, Inc.
_____

Serial No. 85596280
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Lori T. Milvain of Latham, Shuker, Eden & Beaudine, LLP for Holding Company of
the Villages, Inc.

Jonathan R. Falk, Trademark Examining Attorney, Law Office 111 (Robert L.
Lorenzo, Managing Attorney).
_____

Before Bergsman, Masiello, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
On April 12, 2012, applicant applied to register the mark
on the Principal Register for:
• “Real estate consultancy; real estate listing; real estate management
services” in International Class 36;
• “Education services, namely, providing classes, seminars, and
workshops in the field of medicine and medical related services;
physical fitness training services; providing fitness and exercise
facilities” in International Class 41; and
• “Hospitals; medical clinics; medical services; medical testing services,
namely, fitness evaluation; providing assistance, fitness evaluation
Serial No. 85596280
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and consultation to individuals to help them make health, wellness
and nutritional changes in their daily living to improve health” in
International Class 44.1
During prosecution, applicant complied with a requirement to disclaim the word
HEALTH apart from the mark as shown. Applicant also claims acquired
distinctiveness in part under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f),
as to the wording THE VILLAGES based on at least five years’ use and on prior
U.S. Registration Nos. 2339401 and 3915348.
Registration of applicant’s services in International Classes 41 and 44 has
been refused pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on
the ground of a likelihood of confusion with the following seven registered marks,
grouped by owner:
A. DMB Sports Clubs Limited Partnership
VILLAGE HEALTH CLUB & SPA (HEALTH CLUB &
SPA disclaimed) for “health club services, namely,
providing instruction and equipment in the field of
physical exercise; physical fitness instruction; tennis
facilities and instruction” in International Class 41.2
B. Village Health, Inc.
(VILLAGE HEALTH HOLISTIC
disclaimed) for “acupuncture services; chiropractic
services; health care services, namely, wellness programs;

1 Application Serial No. 85596280, filed based on a bona fide intention to use the mark in
commerce pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). The color
green is claimed as a feature of the mark. The description of the mark states: “The mark
consists of the stylized green words ‘The Villages Health.’”
2 Registration No. 3407926, issued April 8, 2008.
Serial No. 85596280
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massage and therapeutic shiatsu massage; medical
counseling; midwife services; nutrition counseling” in
International Class 44.3
C. DaVita Inc.
(DISEASE MANAGEMENT
disclaimed) for “health care services, namely, kidney
disease management programs” in International Class
44.4
D. DaVita Healthcare Partners Inc.
1. VILLAGEHEALTH for “health care services, namely, kidney disease
management programs” in International Class 44;5
2. VILLAGEHEALTH DISEASE MANAGEMENT (DISEASE
MANAGEMENT disclaimed) for “health care services, namely, kidney
disease management programs” in International Class 44;6
3. for “health care services, namely, kidney disease
management programs” in International Class 44;7 and
4. DAVITA VILLAGEHEALTH for “health care services, namely, kidney
disease management programs” in International Class 44.8
Goods and services in classes other than 41 and 44 are omitted from the above list.

3 Registration No. 3425159, issued May 13, 2008.
4 Registration No. 3779495, issued April 20, 2010.
5 Registration No. 3758353, issued March 9, 2010.
6 Registration No. 3779494, issued April 20, 2010.
7 Registration No. 3758496, issued March 9, 2010.
8 Registration No. 4016256, issued August 23, 2011.
Serial No. 85596280
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On July 15, 2013, at applicant’s request, its real estate services in
International Class 36 were divided into a child application, which is not before us.9
Applicant timely appealed the refusal, and the appeal has been fully briefed.
Proposed Amendment
In its reply brief, applicant proposes to amend its identification of services to
add the wording “for senior citizens in retirement communities,” as shown in bold
red type below:
• “Education services, namely, providing classes, seminars, and
workshops in the field of medicine and medical related services for
senior citizens in retirement communities; physical fitness
training services for senior citizens in retirement communities;
providing fitness and exercise facilities for senior citizens in
retirement communities” in International Class 41; and
• “Hospitals for senior citizens in retirement communities;
medical clinics for senior citizens in retirement communities;
medical services for senior citizens in retirement communities;
medical testing services, namely, fitness evaluation for senior
citizens in retirement communities; providing assistance, fitness
evaluation and consultation to individuals to help them make health,
wellness and nutritional changes in their daily living to improve
health for senior citizens in retirement communities” in
International Class 44.
An analysis of likelihood of confusion under Section 2(d) includes a
comparison of the goods or services in the refused application and cited
registrations. We therefore must first address these proposed amendments to
applicant’s identification of services. In re Paper Doll Promotions Inc., 84 USPQ2d
1660, 1662 (TTAB 2007).

9 Application Serial No. 85979735.
Serial No. 85596280
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It is improper to request amendment in a reply brief rather than by filing a
separate request for remand that includes a showing of good cause. See In re
Thomas White Int’l Ltd., 106 USPQ2d 1158, 1160 n.2 (TTAB 2013) (noting, with
respect to applicant’s proposed amendment in its appeal brief, that “at this late
juncture applicant would not be able to show good cause”); In re Major League
Umpires, 60 USPQ2d 1059, 1060 (TTAB 2001); Trademark Trial and Appeal Board
Manual of Procedure (TBMP) §§ 1205.01, 1209.04 (3d ed. rev. 2 June 2013). In any
event, because the services identified in each of the cited registrations could be
offered to “senior citizens in retirement communities,” it is clear that applicant’s
proffered amendment would not overcome the Section 2(d) refusal. Applicant’s
request to amend its recitation of services therefore is denied.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods or services. 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.”). We discuss each of the du Pont factors as to
which applicant or the examining attorney submitted evidence. To the extent that
Serial No. 85596280
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any other du Pont factors for which no evidence was presented may nonetheless be
applicable, we treat them as neutral.
A. Similarity of the Services and Channels of Trade
We first consider the similarity of the services and channels of trade, the
second and third du Pont factors. The relevant services recited in the application
and the cited registrations are summarized in the following chart:
Applicant’s Selected Services Cited Registration Registrants’ Selected Services
physical fitness training
services; providing fitness and
exercise facilities, in
International Class 41
medical testing services,
namely, fitness evaluation;
providing assistance, fitness
evaluation and consultation to
individuals to help them make
health, wellness and
nutritional changes in their
daily living to improve health,
in International Class 44
1 VILLAGE HEALTH
CLUB & SPA
health club services, namely,
providing instruction and
equipment in the field of
physical exercise; physical
fitness instruction; tennis
facilities and instruction, in
International Class 41
education services, namely,
providing classes, seminars,
and workshops in the field of
medicine and medical related
services, in International Class
41
hospitals; medical clinics;
medical services; medical
testing services, namely,
fitness evaluation; providing
assistance, fitness evaluation
and consultation to individuals
to help them make health,
wellness and nutritional
changes in their daily living to
improve health, in
International Class 44
2

acupuncture services;
chiropractic services; health
care services, namely, wellness
programs; massage and
therapeutic shiatsu massage;
medical counseling; nutrition
counseling, in International
Class 44
Serial No. 85596280
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Applicant’s Selected Services Cited Registration Registrants’ Selected Services
education services, namely,
providing classes, seminars,
and workshops in the field of
medicine and medical related
services, in International Class
41
hospitals; medical clinics;
medical services; medical
testing services, namely,
fitness evaluation; providing
assistance, fitness evaluation
and consultation to individuals
to help them make health,
wellness and nutritional
changes in their daily living to
improve health, in
International Class 44
3

health care services, namely,
kidney disease management
programs, in International
Class 44
4 VILLAGEHEALTH
5 VILLAGEHEALTH
DISEASE
MANAGEMENT
6

7 DAVITA
VILLAGEHEALTH

Applicant’s services are identical in part to the services identified in each
cited registration. With respect to the first cited registration, for example, applicant
offers “physical fitness training services” and the cited registered services include
“physical fitness instruction.” For the remaining registrations, applicant’s broadly
worded “medical services” encompass the more narrowly worded services identified
in the second cited registration (including “medical counseling”) and third through
seventh cited registrations (“health care services, namely, kidney disease
management programs”). Therefore, we presume that the services are offered in all
normal channels of trade and are available to all potential classes of ordinary
consumers, and that the channels of trade and classes of purchasers are the same.
See Stone Lion Capital Partners, LP v. Lion Capital LLP, __ F.3d ___, 110 USPQ2d
1157, 1161 (Fed. Cir. 2014); Citigroup Inc. v. Capital City Bank Group Inc., 637
Serial No. 85596280
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F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); American Lebanese Syrian
Assoc. Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028
(TTAB 2011); In re Smith & 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.”). See also In
re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding
Board entitled to rely on this presumption in determining likelihood of confusion).
Applicant’s broadly identified educational services in International Class 41 –
“providing classes, seminars, and workshops in the field of medicine and medical
related services” – are related on their face to the medical and health care services
identified in the second through seventh cited registrations. The examining
attorney also submitted third-party registrations and websites showing that some
entities offering medical and health care services also offer similar educational
services.10
For these reasons, we find that applicant’s services in International Classes
41 and 44 are identical in part and otherwise closely related to services identified in
each of the seven cited registrations. Therefore, the second and third du Pont
factors – the similarity of the services and channels of trade – weigh strongly in
favor of a likelihood of confusion.

10 See June 7, 2012 Office action at 22-59; January 4, 2013 final Office action at 35-44.
Serial No. 85596280
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B. Similarity of the Marks
We turn next to the du Pont likelihood of confusion factor focusing on “‘the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation, and commercial impression.’” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005) (quoting du Pont, 177 USPQ at 567). In comparing the marks, we are
mindful that the test is not whether the marks can be distinguished when subjected
to a side-by-side comparison, but rather whether they are sufficiently similar in
terms of their overall commercial impression so that confusion as to the source of
the goods offered under the respective marks is likely to result. Midwestern Pet
Foods Inc., v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435,
1440 (Fed. Cir. 2012); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff’d, No. 92-1086 (Fed. Cir. June 5, 1992).
Because similarity or dissimilarity is determined based on the marks in their
entireties, our analysis cannot be predicated on dissecting the marks into their
various components; that is, the decision must be based on the entire marks, not
just part of the marks. Stone Lion Capital Partners, LP, 110 USPQ2d at 1161; In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); 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.”). On the other hand, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a particular feature of a
Serial No. 85596280
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mark, provided the ultimate conclusion rests on a consideration of the marks in
their entireties. In re Nat’l Data Corp., 224 USPQ at 751. We focus on the
recollection of the average purchaser, who normally retains a general rather than a
specific impression of trademarks. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438
(TTAB 2012).
Applicant’s mark is , with HEALTH disclaimed.
The seven cited registered marks are:
1. VILLAGE HEALTH CLUB & SPA
2.
3.
4. VILLAGEHEALTH
5. VILLAGEHEALTH DISEASE MANAGEMENT
6.
7. DAVITA VILLAGEHEALTH
We find that the dominant portion of applicant’s mark is the phrase
VILLAGES HEALTH. The only other term in applicant’s mark is the definite
article THE, which is insignificant as a source-identifier. See In re Thor Tech Inc.,
90 USPQ2d 1634, 1635 (TTAB 2009) (“The addition of the word ‘The’ at the
Serial No. 85596280
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beginning of the registered mark does not have any trademark significance.”); In re
Narwood Prods., Inc., 223 USPQ 1034, 1034 (TTAB 1984) (noting the insignificance
of the word “the” in comparison of THE MUSIC MAKERS and MUSICMAKERS);
Conde Nast Publ’ns Inc. v. Redbook Publ’g Co., 217 USPQ 356, 357 (TTAB 1983)
(noting that the word “the” cannot serve as an indication of origin). In addition,
applicant’s mark has only minimal design aspects: the color green and curled,
exaggerated serifs on certain letters.
1. Registered Marks Owned by Village Health, Inc., DaVita Inc., and DaVita
Healthcare Partners Inc.
We find that the phrase VILLAGE HEALTH is the dominant portion of the
second through sixth cited marks: , ,
VILLAGEHEALTH, VILLAGEHEALTH DISEASE MANAGEMENT, and
. Each of these five marks either uses the phrase VILLAGE
HEALTH alone, or combines it with one or more of the following: a design element,
wording that is merely descriptive in association with the identified services (i.e.,
DISEASE MANAGEMENT), or much smaller subsidiary wording (i.e., HOLISTIC
REALISTIC). Presentation in two of the marks of the phrase VILLAGEHEALTH
without a space does not change their commercial impression; based on normal
English pronunciation we find that consumers would view and verbalize
VILAGEHEALTH as the two words VILLAGE HEALTH. See, e.g., In re ING Direct
Serial No. 85596280
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Bancorp, 100 USPQ2d 1681, 1690 (TTAB 2011) (finding “Person2Person Payment”
generic despite deletion of spaces); Giersch v. Scripps Networks Inc., 90 USPQ2d
1020, 1025 (TTAB 2009) (finding that DESIGNED TO SELL does not create a
distinct commercial impression from DESIGNED2SELL). In addition, the wording
in composite word and design marks normally is accorded greater weight in the
likelihood of confusion analysis because consumers use the words to call for the
services. See Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana
Inc., 98 USPQ2d 1921, 1934 (TTAB 2011); In re Appetito Provisions Co., 3 USPQ2d
1553, 1554 (TTAB 1987). In the composite cited marks and
, furthermore, the design appears to depict a stylized
representation of a village, reinforcing the meaning of the term VILLAGE, which is
common to applicant’s mark and the cited marks. We also note that there is no
material difference between singular and plural forms of the same term. See, e.g.,
In re Belgrade Shoe Co., 411 F.2d 1352, 162 USPQ 227 (CCPA 1969); Wilson v.
Delaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957); In re Sarjanian, 136
USPQ 307, 308 (TTAB 1962).
Because the dominant portions of applicant’s mark and each of the cited
marks are nearly identical, we find that applicant’s mark
is similar in sight, sound, and meaning and makes a
Serial No. 85596280
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very similar commercial impression to five of the cited marks: ,
, VILLAGEHEALTH, VILLAGEHEALTH DISEASE MANAGEMENT,
and .
We separately address the seventh cited registration, DAVITA
VILLAGEHEALTH. The mark in this registration combines the term
VILLAGEHEALTH with DAVITA, which appears to be a trade name of the owners
of five of the cited registrations. There is no per se rule that if two marks are
confusingly similar, the addition of a house mark is not sufficient to differentiate
them. New England Fish Co. v. Hervin Co., 511 F.2d 562, 184 USPQ 817, 819
(CCPA 1975). Nonetheless, it has often been said that likelihood of confusion will
not be avoided when trade names and house marks are added to otherwise identical
terms. “[S]uch addition may actually be an aggravation of the likelihood of
confusion as opposed to an aid in distinguishing the marks so as to avoid source
confusion.” In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (citations
omitted) (finding applicant’s LE CACHET DE DIOR confusingly similar to
CACHET). See also In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558,
559 (CCPA 1972) (stating that the addition of a trade name will make consumers
think that the products have a common origin or that the companies merged);
Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1201-02 (TTAB 2007) (applying
Serial No. 85596280
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principle that “the addition of a trade name or house mark or other such matter to
one of two otherwise similar marks will not serve to avoid a likelihood of
confusion”). Here, the shared terms VILLAGES HEALTH and VILLAGEHEALTH
are virtually identical in both marks and not highly suggestive or merely
descriptive. We find that the addition of the term DAVITA does not serve to make
confusion unlikely by distinguishing applicant’s mark
from the cited mark DAVITA VILLAGEHEALTH.
For all of the reasons discussed above, we find applicant’s mark to be similar
in commercial impression to all of the cited marks owned by Village Health, Inc.,
DaVita Inc., and DaVita Healthcare Partners Inc. Both have essentially the same
dominant terms as applicant’s mark and are similar in sight, sound, and
connotation. The first du Pont factor thus weighs in favor of a likelihood of
confusion between applicant’s mark and these six cited registrations.
2. Registration Owned by DMB Sports Clubs Limited Partnership
We reach a different conclusion with respect to the first cited registration,
VILLAGE HEALTH CLUB & SPA, with HEALTH CLUB & SPA disclaimed. We
find that consumers would view VILLAGE in this cited registered mark as a
modifier for the common descriptive phrase HEALTH CLUB & SPA, rather than
reading the terms VILLAGE HEALTH together. Therefore, we find that applicant’s
mark has a different meaning and makes a different
overall commercial impression from VILLAGE HEALTH CLUB & SPA, and the
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first du Pont factor does not weigh in favor of a likelihood of confusion between
applicant’s mark and this cited registration.
C. The Number and Nature of Similar Marks in Use on Similar Services
The sixth du Pont factor is the number and nature of similar marks in use for
similar goods or services. Applicant argues that third-party use renders VILLAGE
a weak mark entitled to only a narrow scope of protection in association with goods
or services related to healthcare.11 In support, applicant points to the seven cited
registered marks owned by four different entities, as well as printouts from
websites that appear to be associated with the cited marks and third-party sites for
services incorporating the phrase VILLAGE HEALTH. The third-party sites are:
• The Village Health Care Center, a skilled nursing facility in
Missoula, Montana (villagehealthcare.com);
• Village Health Care in Portland, Oregon (villagehc.com), services not
specified;
• The Village Health Care Center, a full-service health care facility in
Broken Arrow, Oklahoma (villagehealthcare.net);
• Village Health Wellness Spa in Smyrna, Georgia (villagehealth.net);
• Village Healthcare and Rehabilitation (villagecarecenter.com),
location and services not specified;
• Village Health Care Services, Inc. in West Orange, New Jersey, a
non-profit organization “dedicated to providing health, nutrition, and
social services to disadvantaged people living in the country of
Nigeria in West Africa” (villagehealthcareservices.com); and
• Village Health Partners, family doctors in Plano, Texas
(villagehealthpartners.com).12

11 See Applicant’s Brief at 14-16.
12 July 3, 2013 Request for Reconsideration at 26-31, 38-40.
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While the evidence indicates some third-party use of the phrase VILLAGE
HEALTH, the examples and information provided about the use are limited. The
probative value of this evidence also is limited because the website printouts do not
establish how many relevant customers may have encountered the various third-
party uses. In particular, the printouts alone do not establish that potential
consumers have been so exposed to the phrase VILLAGE HEALTH that they have
become accustomed to it and look to other elements for source identification in the
healthcare field. See In re Thomas, 79 USPQ2d 1021, 1026 (TTAB 2006) (stating
that, “without evidence as to the extent of third-party use, such as how long the
websites have been operational or the extent of public exposure to the sites, the
probative value of this evidence is minimal”).
In addition, applicant included in its brief a chart listing six registered marks
incorporating the term VILLAGE but not VILLAGE HEALTH. Not only is evidence
submitted with an appeal brief untimely under Trademark Rule § 2.142(d),
37 C.F.R. § 2.142(d), but a mere list of registrations does not make the listed
registrations of record. In re Jump Designs LLC, 80 USPQ2d at 1372; TBMP
§ 1208.02. Notwithstanding these evidentiary problems, such registrations are not
evidence that the marks therein have been used at all, let alone used so extensively
that consumers have become sufficiently conditioned by their usage that they can
distinguish between such marks on the basis of minor differences. The probative
value of third-party trademarks depends entirely on their usage. Palm Bay Imports
Inc., 73 USPQ2d at 1693. Where, as here, the record includes no evidence about the
Serial No. 85596280
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extent of third-party uses, the probative value of this evidence is minimal. Han
Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1561 (Fed. Cir.
2001). “The existence of [third-party] registrations is not evidence of what happens
in the market place or that consumers are familiar with them nor should the
existence on the register of confusingly similar marks aid an applicant to register
another likely to cause confusion, mistake or to deceive.” AMF Inc. v. American
Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973).
On the record in this case, we find insufficient support for applicant’s
argument that the phrase VILLAGE HEALTH in the cited registrations is weak in
the field of healthcare services and entitled to only a narrow scope of protection.
Conclusion
For the foregoing reasons, we find that, on balance, the relevant du Pont
factors weigh in favor of a finding of likelihood of confusion between applicant’s
mark and the marks in all cited registrations except VILLAGE HEALTH CLUB &
SPA. With respect to that mark only, we find that the dissimilarity of the marks is
dispositive. See Kellogg Co. v. Pack’em Enters. Inc., 951 F.2d 330, 21 USPQ2d 1142,
1145 (Fed. Cir. 1991).
Decision: The examining attorney’s refusal to register applicant’s mark
under Section 2(d) of the Trademark Act is reversed as to Registration No. 3407926
and affirmed as to Registration Nos. 3425159, 3779495, 3758353, 3779494,
3758496, and 4016256.