Inception Fertility Ventures

Trademark Trial and Appeal Board

Nov 15, 2019

86716962 (T.T.A.B. Nov. 15, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: November 15, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Inception Fertility Ventures, LLC
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Serial No. 86716962
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Mark H. Miller of Cline H. White,
for Inception Fertility Ventures, LLC.
Kyle C. Aurand, Trademark Examining Attorney, Law Office 126,
Andrew Lawrence, Managing Attorney.1
_____

Before Mermelstein, Ritchie and Goodman,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Inception Fertility Ventures, LLC (“Applicant”) seeks registration on the Principal
Register of the mark INCEPTION (in standard characters) for
Medical services, namely, evaluation, diagnosis,
prevention and treatment of infertility; in vitro fertilization
services; assisted reproductive procedures including in
vitro fertilization, ovulation induction, intrauterine

1 Mr. Aurand, who took over this case as Examining Attorney after the appeal brief was filed,
requested remand in order to supplement the record. The Board granted the request, and a
subsequent final office action issued to include this additional evidence. Applicant was
afforded the opportunity to file a supplemental appeal brief, but did not do so. Applicant did
file a reply brief in response to the Examining Attorney’s arguments.
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insemination, intracytoplasmic sperm injection, blastocyst
transfer, pre-implantation genetic diagnosis of embryos,
administration of egg and sperm donations, treatments
involving third-party gestational carriers, and laparoscopy;
providing a website featuring information about health
and wellness, namely, reproductive health, infertility, and
assisted reproductive procedure in International Class 44.2
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles the registered mark INCEPTION HEALTH (in
standard characters, HEALTH disclaimed) for “[p]rovid[ing] a continuum of digital
health services, namely, digital diagnosis, electronic healthcare visits, virtual ICU,
healthcare consultation services delivered by smart phones, and telemedicine for
ICU, in-patient and outpatient care” in International Class 44 as to be likely to cause
confusion.3
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on likelihood of

2 Application Serial No. 86716962 was filed on August 6, 2015, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
Page references to the application record refer to the online database of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs on appeal
refer to the Board’s TTABVUE docket system.
3 Registration No. 4970293.
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confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973) (“DuPont”). 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 (CCPA 1976). These factors, and the other relevant DuPont
factors now before us, are discussed below. Cai v. Diamond Hong, Inc., 901 F.3d 1367,
127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (quoting In re Mighty Leaf Tea, 601 F.3d
1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010) (“Not all of the DuPont factors are
relevant to every case, and only factors of significance to the particular mark need be
considered.”)); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242
(TTAB 2015) (“While we have considered each factor for which we have evidence, we
focus our analysis on those factors we find to be relevant.”).
A. Similarity or Dissimilarity of the Marks
We must compare the marks in their entireties as to appearance, sound,
connotation and commercial impression to determine the similarity or dissimilarity
between them. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1690 (Fed. Cir. 2005), (quoting DuPont, 177
USPQ at 567). The test, under the first DuPont factor, is not whether the marks can
be distinguished when subjected to a side-by-side comparison, but rather whether the
marks are sufficiently similar in terms of their overall commercial impression that
confusion as to the source of the goods or services offered under the respective marks
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is likely to result. Coach Servs. Inc. v. Triumph Learning, LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012) (quoting Leading Jewelers Guild, Inc. v. LJOW
Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB 2007)). Although the marks at issue
must be considered in their entireties, it is well-settled that one feature of a mark
may be more significant than another, and it is not improper to give more weight to
this dominant feature in determining the overall commercial impression created by
the mark. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946-47 (Fed.
Cir. 2004); In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Applicant argues that the marks differ in sound and appearance because
Registrant’s mark contains two terms and Applicant’s mark contains one term.
Applicant submits that for Registrant’s mark, the consumers’ focus will be on the
term “health,” while for Applicant’s mark, the consumers’ focus will be on the term
“inception.” Applicant also argues that the marks differ in connotation and
commercial impression because Registrant’s mark provides the connotation and
commercial impression of “generalized medicine” while Applicant’s mark provides the
connotation and commercial impression of a “beginning.” We are not persuaded by
Applicant’s arguments.
Both Applicant’s mark, INCEPTION, and Registrant’s mark, INCEPTION
HEALTH, are in standard characters. The prominent feature and dominant portion
of Registrant’s mark is INCEPTION given its location as the first part of the mark as
well as the first word to be articulated when pronouncing the mark. See Palm Bay
Imps. 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE
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CLICQUOT because “veuve” is the first word in the mark). The word HEALTH in
Registrant’s mark is less significant because it is descriptive, if not generic, of
Registrant’s digital health services and has been disclaimed. In re Dixie Rests., Inc.,
105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (disclaimed matter that is
descriptive of or generic for a party’s goods or services is typically less significant or
less dominant when comparing marks).
Applicant’s mark INCEPTION incorporates in its entirety the dominant portion
of Registrant’s mark. Likelihood of confusion is often found where the entirety of one
mark is incorporated within another. See e.g., In re Denisi, 225 USPQ 624, 626 (TTAB
1985) (PERRY’S PIZZA for restaurant services specializing in pizza and PERRY’S for
restaurant and bar services); Johnson Publ’g Co. v. Int’l Dev. Ltd., 221 USPQ 155,
156 (TTAB 1982) (EBONY for cosmetics and EBONY DRUM for hairdressing and
conditioner). See also Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 194 USPQ
419, 422 (CCPA 1977) (“When one incorporates the entire arbitrary mark of another
into a composite mark, . . . inclusion of a merely suggestive or descriptive element, of
course, is of much less significance in avoiding a likelihood of confusion.”).
We find the marks are similar in sound, appearance, meaning and commercial
impression as they both contain the term INCEPTION. The addition of HEALTH to
Registrant’s mark does not distinguish the marks because HEALTH is a non-
distinctive term that has little or no source-indicating significance and would be seen
by purchasers as merely an indication that Registrant is offering health services.
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Given the similarities, when the marks are considered in their entireties, the marks
engender very similar overall commercial impressions.
This DuPont factor strongly favors a finding of likelihood of confusion.
B. Similarity or Dissimilarity of the Services, Channels of Trade and
Classes of Purchasers
We compare the services as they are identified in the involved application and the
registration, as well as the similarity or dissimilarity of established, likely to continue
trade channels. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052
(Fed. Cir. 2018); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Hous. Comput. Servs.
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). To determine the nature
and scope of the services, as well as their means of delivery and recipients, we review
the respective identifications. See generally In re Jump Designs LLC, 80 USPQ2d
1370, 1374 (TTAB 2006).
It is not necessary that the respective services be identical or even competitive in
order to find that they are related. The respective services need only be ‘“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. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722
(Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB
2007)).
Applicant submits that the Examining Attorney has inaccurately defined the
relevant services of both Applicant and Registrant as digital health services because
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Registrant’s services do not encompass Applicant’s services and are not legally
equivalent. 11 TTABVUE 7, 9. Applicant argues that the Examining Attorney has
read Registrant’s identification too broadly. 11 TTABVUE 9, 10; 23 TTABVUE 7.
Applicant submits that while both Applicant and Registrant could provide
information about fertility, Applicant’s website information services do not
encompass digital telemedicine services. Id.
Applicant distinguishes the services of Applicant and Registrant by asserting that
its services “must be performed in person,” while Registrant’s services “must be
provided online.” (emphasis in original). 11 TTABVUE 7, 9, 10; 23 TTABVUE 7.
Applicant submits that Registrant offers “a continuum of digital health services”
which consumers expect to be provided online or digitally over a smartphone or
device, that Registrant’s services involve “health advice or information,” not
treatment, “[t]here are no personal, doctor patient, face-to-face services contemplated
by the registration’s services” and “NO fertilization can occur through a smart phone
app.” 11 TTABVUE 7; 23 TTABVUE 5. Applicant contends that consumers of
Applicant’s in-person services seek “personalized help” in conceiving children while
consumers of Registrant’s services are “most likely to do so by blindly checking an
app on their phone without even knowing who is providing the information.” 11
TTABVUE 7; 23 TTABVUE 5.
The Examining Attorney, on the other hand, argues that “Applicant has
miscategorized and overly simplified the nature of Registrant’s services” and that
“[c]onsumers are not simply seeking health advice over a smart phone, they are
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seeking treatment and consultations over digital sources to help reduce the costs
associated with in person medical visits.” 22 TTABVUE 16. The Examining Attorney
argues that Applicant’s and Registrant’s services are legally identical because both
Applicant and Registrant use broad wording to describe their services and that
“Applicant’s services encompass digital evaluation, diagnosis, prevention and
treatment of infertility, and telemedicine for infertility evaluations, diagnosis,
prevention and treatment.” 22 TTABVUE 13. The Examining Attorney submits that
“Applicant’s services and Registrant’s services are closely related because they are
commonly offered by the same practitioners or entities,” pointing to the evidence that
fertility clinics “offer the evaluation, diagnosis, prevention and treatment of
infertility, and they offer these services remotely through telemedicine and digital
means, in addition to in-person visits.” 22 TTABVUE 13.
As requested by the Examining Attorney, we take judicial notice of the definition
of telemedicine which is “the practice of medicine when the doctor and patient are
widely separated using two-way voice and visual communication (as by satellite or
computer).”4 Also in support of his arguments, the Examining Attorney submitted a
number of Internet web pages from third-party commercial websites as well as an
article about telemedicine and infertility treatment that demonstrates that it is likely
that a single entity offers telehealth services such as telemedicine and telephone

4 Merriam-Webster Dictionary, merriam-webster.com. The Board may take judicial notice of
dictionary definitions, including online dictionaries that exist in printed format. In re Cordua
Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632
(Fed. Cir. 2016); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
Serial No. 86716962
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consultation in connection with infertility medical services that include the
evaluation, diagnosis, prevention and treatment of infertility. In particular, the
article on the website medium.com indicates that telemedicine is “a driving force in
the infertility world,” “makes top doctors more accessible,” and “lower[s] the rates of
IVF and speed[s] up the fertility process. …”5 “While patients need to travel for the
egg extraction and embryo implantation, the initial consultations take place via
videoconference as does patient monitoring and test results analytics.”6 Examples of
fertility treatment centers offering telemedicine services include the following:
Arc Fertility offers fertility treatment packages and
provides a “Telehealth System” that includes a virtual
waiting room featuring web and mobile access, screen and
file sharing, chat features, and 24/7 Support.7
Augusta University Health offers telehealth services in
connection with infertility treatment, such as consultations
and review of test results through two-way real time
teleconferences on a computer or mobile device.8

Barnes Jewish Hospital Healthcare offers a “telemedicine
program to help our fertility patients more easily navigate
the process of evaluation, diagnosis, and treatment” which
includes video conference consultations, access to records
and test results, and monitoring done at telemedicine
clinics.9

5 October 31, 2018 Final Action at TSDR 50-51, “On a Long Road to Having a Baby
Telemedicine can Help,” Medium.com.
6 Id.
7 October 31, 2018 Final Action at TSDR 10-13, arcfertility.com.
8 October 31, 2018 Final Action at TSDR 14, augustahealth.org.
9 October 31, 2018 Final Action at TSDR 15-16 barnesjewish.org.
Serial No. 86716962
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Fertility and Midwifery Care Center offers phone or
FaceTime consultation as an initial step in your fertility
evaluation and will consult remotely.10
Gundersen Health System offers clinical telemedicine for
fertility medical services, in the form of interactive video,
audio and high speed connection link for “more intensive
management” and to save “time, money and [the] stress of
traveling to appointments.”11
Intermountain Fertility Care Services offers natural
procreative technology for infertility and offers
telemedicine to couples in Utah, Wyoming, Idaho and
Washington State.12
CoxHealth offers patients with infertility issues a new
telemedicine clinic which offers access to specialists that
may not be in a given area, allowing appointments with a
physician from home, work or school and saving drive time
“and hundreds of dollars in related medical expenses.”13
Maven offers fertility IVF and egg freezing and unlimited
video appointments and practitioner messaging.14
Roar+Fertility offers the Roar Fertility Reset program
which is a fully comprehensive online program and
provides one-on-one virtual consultation and live weekly
virtual group meetings.15
Stanford Children’s Health offers virtual follow up visits
for established Stanford Medicine Fertility and
Reproductive Health patients living in California.16

10 October 31, 2018 Final Action at TSDR 20-22, fertilityandmidwifery.com.
11 October 31, 2018 Final Action at TSDR 23-24, gundersenhealth.org.
12 October 31, 2018 Final Action at TSDR 25, intermountainfertilitycare.com.
13 October 31, 2018 Final Action at TSDR 27, ky3.com.
14 October 31, 2018 Final Action at TSDR 29-32, mavenclinic.com.
15 October 31, 2018 Final Action at TSDR 36-41, roarfertility.com.
16 October 31, 2018 Final Action at TSDR 42-44, standfordchildren.org.
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The Berkley Center for Reproductive Wellness offers
Infertility Telemedicine.17
Washington University Physicians Fertility and
Reproductive Medicine Center through CoxHealth offers
“infertility [virtual] appointments with Washington
University fertility specialists via telemedicine” through a
special telemedicine clinic.18
IVF1 treats patients around the world. … “[N]ow many of
the advantages of office consultations can be achieved with
secure online video consultations.19
Conceptions Reproductive Associates of Colorado offers
fertility evaluation and “[t]o facilitate care over a distance,
we provide WebEx or Skype consultations to allow you to
see your doctor and have a personalized conversation over
the computer screen – no matter where in the world you
may be.”20
The evidentiary record confirms the commercial relationship between the services
identified in the registration and the services identified in the application. A provider
of infertility services, including the services identified by Applicant, may offer some
of its services in-person and others via telemedicine. In particular, as shown by the
evidence, telemedicine may be offered for evaluations, consultations, access to
records, access to test results, patient monitoring and some office appointments in
connection with infertility treatment. Thus, this evidence supports a finding that the
digital health services identified in the registration are complementary and related

17 October 31, 2018 Final Action at TSDR 46-49, berkleycenter.com.
18 October 31, 2018 Final Action at TSDR 49, fertility.wustl.edu.
19 May 12, 2018 Denial of Reconsideration at TSDR 15-16, ivf1.com.
20 May 12, 2018 Denial of Reconsideration at TSDR 25-27, conceptionsrepro.com.
Serial No. 86716962
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to Applicant’s medical services and will be encountered by the same consumers under
the same mark.
Although Applicant argues that its medical services are offered only in person, the
identification in the application is not restricted to in-person medical services and is
broad enough to include the delivery of infertility medical services electronically and
by telemedicine. And while Applicant is correct that Registrant’s services are, as set
forth in its identification, not provided in person, Registrant’s digital diagnosis
services, electronic health care visit services, and telemedicine services are
unrestricted to any type of medical field and necessarily encompass the specific field
of infertility medical services. Thus, Registrant’s services are broad enough to be
offered in connection with medical services relating to the evaluation, diagnosis and
treatment of infertility. Lastly, we note that even if Registrant offered only
telemedicine and Applicant offered only in-person treatment, the services would be
related for purposes of likelihood of confusion. A patient needing fertility treatment
might seek a fertility consultation using services offered by either Registrant or
Applicant, so if similar marks are used, a patient is likely to assume that the in-
person medical or telemedicine services emanate from the same source. Accordingly,
we find that Applicant’s medical services and Registrant’s digital health services are
related.
Applicant also has argued that its services are dissimilar to Registrant’s services
because Registrant’s registration does not include in-person in vitro fertilization and
assisted reproductive services. However, we need not assess the relatedness of each
Serial No. 86716962
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and every service within this single class. If likelihood of confusion exists with respect
to any of Applicant’s identified services in a particular class, the refusal of
registration must be affirmed as to all services in that class. Our finding that at least
some of Applicant’s medical services are complementary and related to Registrant’s
digital health services is sufficient to support a finding that there is a likelihood of
confusion. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 209
USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found if there is likely
to be confusion with respect to any items that come within the identification of goods
in a particular class in the application). Accord Hewlett-Packard Dev. Co. v. Vudu
Inc., 92 USPQ2d 1630, 1632 n.4 (TTAB 2009).
This DuPont factor weighs in favor of a finding of likelihood of confusion.
As to channels of trade, Applicant argues that “Registrant is restricted to digital
health and telemedicine” and that “even if the registrant’s digital health services did
feature fertility-related areas, they would not travel in the same trade channel as
Applicant’s services” because Applicant and Registrant are “different types of
retailer[s].” 11 TTABVUE 12.
However, Applicant’s services are not limited by their terms to in-person delivery,
and the record shows that medical services for the diagnosis, evaluation and
treatment of fertility, as identified by Applicant, may be provided electronically as
well as in person. We thus must presume that Applicant’s services are or could be
provided in the same manner as Registrant’s services. Stone Lion, 110 USPQ2d at
1161 (in absence of limitations on channels of trade of identified services, they must
Serial No. 86716962
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be presumed to travel through all usual channels of trade for such services).
Additionally, the website evidence reflects that the channels of trade overlap for at
least some of Applicant’s and Registrant’s services.
This DuPont factor also favors a finding of likelihood of confusion.
C. The conditions under which and buyers to whom sales are made
Applicant argues that confusion is avoided because “the person or couple who are
trying desperately to become pregnant are likely to carefully research and choose
which medical providers from whom they seek services,” are “discriminating buyers,”
and take special care in selecting their medical provider. 11 TTABVUE 13-14.
Applicant also points out that the services sold under the mark “are very expensive –
in time, personal involvement, and money” and that “purchasers of these services are
likely to be sophisticated and are not likely to purchase these services based on
impulse.” Id.
The medium.com article supports Applicant’s position regarding the expense of
these services and indicates that:
[F]ertility treatments are prohibitively expensive, with
IVF costing an average of $12,000 a cycle plus medication
that can run another $5,000. If you’re considering spending
that kind of money—and as insurance often doesn’t cover
IVF and other fertility treatments, many people have to
pay out of pocket—you want to make sure you’ve covered
all your bases first, and that your questions are answered
by people who know what they are doing.”21

21 October 31, 2018 Final Action at TSDR 50, “On a Long Road to Having a Baby Telemedicine
can Help,” Medium.com.
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Insofar as sophistication of purchasers is concerned, we must presume that
Applicant’s and Registrant’s services are offered to both sophisticated and
unsophisticated consumers. Accordingly, the applicable standard of care for the
likelihood of confusion analysis is that of the least sophisticated consumer. Stone
Lion, 110 USPQ2d at 1163 (affirming that TTAB properly considered all potential
investors for recited services, which included sophisticated investors, but that
precedent requires consumer care for likelihood-of-confusion decision to be based “on
the least sophisticated potential purchasers”).
We find that even in the case of the least sophisticated purchaser, a decision as
important as choosing infertility medical services is a serious and expensive one and
most often not covered by insurance. Thus, we find that generally these decisions are
made with significant thought, deliberation, and research, which results in a careful
purchase. Given the nature of the services and the high costs associated therewith,
the conditions of sale favor a finding of no likelihood of confusion. Primrose Ret.
Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1038-39 (TTAB
2016) (finding conditions of sale of selecting senior living facilities favor a finding of
no likelihood of confusion).
Accordingly, we find that this DuPont factor weighs in favor of finding no
likelihood of confusion.
II. Conclusion
We have considered all of the arguments and evidence of record, and all relevant
DuPont factors. Here, any potential sophistication of the purchasers is outweighed by
Serial No. 86716962
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our findings of the strong similarity of the marks, the complementary and related
nature of the services and the overlapping trade channels. On balance, we conclude
that confusion is likely to occur between Applicant’s mark and Registrant’s mark.
Decision: The refusal to register Applicant’s mark INCEPTION is affirmed.