In re Vive Health LLC

Trademark Trial and Appeal Board

May 24, 2019

87009135 (T.T.A.B. May. 24, 2019)

This Opinion is Not a
Precedent of the TTAB

Hearing: August 8, 2018 Mailed: May 24, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Vive Health LLC
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Serial No. 87009135
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Gregg A. Paradise and Gregory S. Gewittz
of Lerner, David, Littenberg, Krumholz & Mentlik, LLP
for Vive Health LLC

Ashley D. Hayes, Trademark Examining Attorney, Law Office 108,
Steven R. Berk, Managing Attorney.
_____
Before Mermelstein, Kuczma, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:
I. Background
Vive Health LLC (“Applicant”) seeks registration on the Principal Register of the
mark VIVE HEALTH in standard characters, with a disclaimer of HEALTH, for “On-
line retail store services featuring a variety of medical equipment, medical supplies
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and home health products” in International Class 35.1 The Examining Attorney
refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d),
based on a likelihood of confusion with the registered mark VIVOHEALTH! in
standard characters for:
retail pharmacy services; retail stores featuring health and
wellness products, namely, prescription drugs and over the
counter medications, consumer medical products, spa
products such as lotions and massage equipment, skin care
products and cosmetics, apparel, jewelry, cancer-focused
apparel, bras, orthopedics and sports rehabilitation
products, breast feeding products, products for babies,
including diapers, nutritional supplements, vitamins, food,
including healthy foods and snacks, products for diabetes,
products for stroke victims, cookbooks and DVDs, plants
and gifts, picture frames, oncology products, geriatric
products, including incontinence products, wound care
products, medication organizers, exercise and fitness
equipment, and relaxation products, home care products,
books and pamphlets providing medical guidance and
information; customer loyalty services and customer club
services, for commercial, promotional and/or advertising
purposes; promoting the goods and services of others by
means of the issuance of loyalty rewards cards; providing
incentive award programs for customers and employees
through the distribution of prepaid stored value cards for
the purpose of promoting and rewarding loyalty; and
providing incentive award programs for customers through
the issuance and processing of loyalty coupons for frequent
use of participating businesses in International Class 35.2
After the Examining Attorney made the refusal final, Applicant appealed. The
appeal was fully briefed and an oral hearing took place. Afterward, the case was
suspended, first pending the expiration of the grace period for the required

1 Application Serial No. 87009135 was filed April 21, 2016 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on an alleged use of the mark in commerce.
2 Registration No. 4129026 issued April 17, 2012, and has been maintained.
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maintenance filing for the cited registration,3 which was made and accepted, and
then pending the resolution of another Board proceeding involving the cited
registration.4 The other Board proceeding subsequently was dismissed, and this
appeal resumed.5
For the reasons set forth below, we affirm the refusal to register.
II. Likelihood of Confusion
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. DuPont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, hereinafter referred to as “DuPont factors”); 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 relatedness of the services. See In re Chatam Int’l Inc., 380 F.3d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004); 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.”).

3 13 TTABVUE.
4 14 TTABVUE (Opposition No. 91238549 included a counterclaim against the cited
registration).
5 16 TTABVUE.
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A. The Services
“[L]ikelihood of confusion can be found ‘if the respective products [or services] are
related in some manner and/or if the circumstances surrounding their marketing are
such that they could give rise to the mistaken belief that they emanate from the same
source.’” Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713,
1722 (Fed. Cir. 2012) (internal citations omitted). In analyzing the second DuPont
factor, we look to the identifications in the application and cited registration. See
Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Computs. Servs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
We must presume that Applicant’s services and those in the cited registration are
legally identical. The application recites on-line retail store services featuring a
“variety of medical equipment, medical supplies and home health products,” which is
presumed to encompass all such services featuring any type of medical equipment,
supplies, or home health products. See, e.g., In re Hughes Furniture Indus., Inc., 114
USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of
‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and
commercial furniture.’”); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992)
(“Registrant’s goods are broadly identified as computer programs recorded on
magnetic disks, without any limitation as to the kind of programs or the field of use.
Therefore, we must assume that registrant’s services encompass all such computer
programs including those which are for data integration and transfer.”). The cited
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registration includes retail store services featuring “health and wellness products”
and particular types of medical supplies such as “incontinence products, wound care
products, [and] medication organizers,” for example. In its briefing, Applicant did not
make arguments under this DuPont factor. We find that the services in the subject
application and the cited registration overlap, and this factor weighs heavily in favor
of a likelihood of confusion.6
B. Trade Channels and Classes of Consumers
Turning to the trade channels and consumers, because Applicant’s and
Registrant’s recitations of services overlap, we presume that the services also move
in overlapping channels of trade and are available to overlapping classes of potential
consumers. See Inter IKEA Sys. B.V. v. Akea, 110 USPQ2d 1734, 1743 (TTAB 2014);
L. & J.G. Stickley, Inc. v. Cosser, 81 USPQ2d 1956, 1971 (TTAB 2007) (“Because the
goods of both parties are at least overlapping, we must presume that the purchasers
and channels of trade would at least overlap.”); see also Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (affirming Board finding
that where an identification is unrestricted, “we must deem the goods to travel in all
appropriate trade channels to all potential purchasers of such goods”). This factor
supports a finding that confusion is likely.

6 The Examining Attorney also submitted relatedness evidence. See TSDR June 30, 2017
Office Action at 4-36.
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C. Similarity of the Marks
We next compare the marks VIVE HEALTH and VIVOHEALTH! “in their
entireties as to appearance, sound, connotation and commercial impression.” Palm
Bay, 73 USPQ2d at 1691 (quoting DuPont, 177 USPQ at 567). The test assesses not
whether the marks can be distinguished in a side-by-side comparison, but rather
whether their overall commercial impressions are so similar that confusion as to the
source of the services offered under the respective marks is likely to result. Coach
Servs., 101 USPQ2d at 1721; see also Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546,
1551 (TTAB 2012).
The marks look and sound very similar. Both marks begin with the identical VIV-
letter string and end with the word HEALTH. They differ only by the single letter E
in Applicant’s mark versus O in the cited mark, the space between the words in
Applicant’s mark, and the exclamation point at the end of the cited mark. The
difference in the vowel in the middle of the marks has only a minimal visual and
phonetic impact. Dictionary entries in the record reflect that both VIVE and VIVO
are recognized words in English with accepted pronunciations, and the “VIV-” portion
of each word can be pronounced the same way.7 While the O in VIVO creates a

7 TSDR June 30, 2017 Office Action at 2-3. Applicant’s argument that the pronunciations
differ is not consistent with the evidence of record, and we sustain the Examining Attorney’s
objection (6 TTABVUE 4-5) to Applicant’s attempt to submit new evidence with its Brief
(4 TTABVUE 12-13). Trademark Rule 2.142(d) provides that the record “should be complete
prior to the filing of an appeal.” 37 C.F.R. § 2.142(d). See In re Midwest Gaming & Entm’t
LLC, 106 USPQ2d 1163, 1165 n.3 (TTAB 2013) (new evidence submitted with brief is
“untimely and therefore not part of the record for this case”).We further agree that even if
the submission were timely, a link to and screenshot from an online video would not suffice
to introduce its content into the record. See In re Olin, 124 USPQ2d 1327, 1331 n.15 (TTAB
2017) (citing In re Powermat Inc., 105 USPQ2d 1789, 1791 (TTAB 2013).
Serial No. 87009135
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different sound than the silent E in VIVE, when the marks in their entireties are
pronounced, they still sound very close, particularly because both have the identical
second term HEALTH. The inclusion of a space between the terms in the mark, or
lack thereof, is not a distinguishing feature. See, e.g., Seaguard Corp. v. Seaward
Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“[T]he marks ‘SEAGUARD’ and ‘SEA
GUARD’ are, in contemplation of law, identical [internal citation omitted].”); In re
Best W. Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be
little doubt that the marks [BEEFMASTER and BEEF MASTER] are practically
identical”); Stock Pot, Inc., v. Stockpot Rest., Inc., 220 USPQ 52, 52 (TTAB 1983), aff’d,
737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the marks
of the parties [STOCKPOT and STOCK POT] are confusingly similar.”). As for the
punctuation in the cited mark, “[t]his case is, … like ‘most cases[,] where the addition
of an exclamation point does not affect the commercial impression of a mark.’” In re
St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (citation
omitted). Applicant argues the anti-dissection rule in the comparison, but “in
articulating reasons for reaching a conclusion on the issue of confusion, 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

Regardless, when a mark is a recognized word, the principle that there is no “correct”
pronunciation of a mark does not apply. Cf. StonCor Grp., Inc. v. Specialty Coatings, Inc., 759
F.3d 1327, 111 USPQ2d 1649, 1651 (Fed. Cir. 2014) (where the mark is not a word in
English or any other language, it is error for the Board to ignore evidence on the particular
pronunciation of the mark and “supply its own pronunciation.”) (emphasis added); In re
Belgrade Shoe Co., 411 F.2d 1352, 162 USPQ 227 (CCPA 1969) (“There is no correct
pronunciation of a trademark that is not a recognized word.”) (emphasis added).
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consideration of the marks in their entireties.” See In re Nat’l Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Stone Lion Capital Partners 110
USPQ2d at 1161.
Turning to the impression and connotation, we agree with Applicant that as the
first word in its mark, VIVE dominates, and “is most likely to be impressed upon the
mind of a purchaser and remembered.” Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9
USPQ2d 1895, 1897 (TTAB 1988). However, the same holds true in the cited
compound word mark, which consumers would perceive as a dominant term, VIVO,
combined with a descriptive word, HEALTH. By the same token, HEALTH, the
second word in the Applicant’s mark, is disclaimed as descriptive, as consumers
would view HEALTH merely as a reference to the featured health-related products.
While we agree with Applicant that consumers would be less likely to focus on
HEALTH to distinguish source, the fact that both marks share this identical term
does contribute to their overall similarity. See In re Nat’l Data Corp., 224 USPQ at
751; see also In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34
(Fed. Cir. 1997).
As to the VIVE and VIVO portions of the marks, the Examining Attorney
introduced English language dictionary definitions of these terms8 as:

8 Particularly given the English language definitions of these words, we see no need to
address the Examining Attorney’s new arguments regarding the Doctrine of Foreign
Equivalents. We therefore deny the request that we take judicial notice of new Spanish
dictionary evidence and census data on Spanish speakers in the U.S. We note that while an
examining attorney “need not request remand in order to make a new argument or change
the rationale for a refusal or requirement,” TBMP § 1203.02(b) (2018), it certainly is not
optimal examination practice to raise the Doctrine of Foreign Equivalents for the first time
at the briefing stage, particularly given that a prior Office Action countered Applicant’s
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VIVE: exclamation
long live; up with (a specified person or thing)9
VIVO: adjective, adverb
Music (in combination)
With life and vigour10
Applicant points to the word origin information in the definitions to argue that
consumers would understand VIVE as a French word associated with long life while
VIVO would be understood as an Italian word for “lively” or the Latin term “in vivo”
(the Latin origin is not reflected in the dictionary definition). Considering the
definitions of record, they reflect that VIVE and VIVO have different definitions, but
are somewhat similar in meaning and impression to the extent they both relate to
“life.” Particularly given that in these marks, VIVE and VIVO- both are used in
conjunction with HEALTH and are for use with identical services, we find the overall
connotations and impression of the marks to be similar.
This DuPont factor weighs in favor of likely confusion.
III. Conclusion
The overall similarity of these marks for legally identical services that move in
the same channels of trade to the same classes of customers renders confusion likely.
Decision: The refusal to register Applicant’s mark is affirmed.

arguments about the terms coming from different foreign languages by noting that “both
terms appear in the American English dictionary,” and relying on the similarity of those
English language definitions.
9 TSDR August 10, 2016 Office Action at 7.
10 TSDR June 30, 2017 Office Action at 2-3.