InteliStaf Healthcare Manage-ment, L.P.

Trademark Trial and Appeal Board

Mar 29, 2006

No. 78387294 (T.T.A.B. Mar. 29, 2006)

Mailed: March 29, 2006
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re InteliStaf Healthcare Management, L.P.
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Serial No. 78387294
_______

J. Charles Dougherty of Wright, Lindsey & Jennings LLP for
Intelistaf Healthcare Management, L.P.

Evelyn Bradley, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Hairston, Bucher and Kuhlke, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application has been filed by InteliStaf Health
Management, L.P. to register the mark INTELICASH for
services which were ultimately identified as “debit card
services, namely, the issuance of debit cards to consumers
and the extension of debit card services to consumers.”1

1 Serial No. 78387294, filed March 19, 2004, which is based on a
bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78387294
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when applied to the
identified goods, so resembles the mark INTELECASH, which
is registered for “business services, namely, electronic
measuring, tracking, monitoring and controlling prepayments
of goods and services by the public, in connection with
various account numbers as issued on debit cards, prepaid
telephone calling cards, and other media,”2 as to be likely
to cause confusion, mistake, or deception.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. duPont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or

2 Registration No. 2,042,905 issued March 11, 1997; Section 8 and
15 affidavit accepted and acknowledged, respectively.
Ser No. 78387294
3
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
We turn first to a consideration of the respective
marks. Applicant acknowledges that the difference in the
marks INTELICASH and INTELECASH is slight. Nonetheless,
applicant contends that:
This deceptively small distinction, however, is
critically important to the connotation and
commercial impression created by the marks. The
applicant’s mark includes the formative “inteli”
as a prefix. The formative suggests to the
consumer the idea of intelligence or knowledge.
The registered mark, by contrast, includes the
formative “tele-.” The “tele” formative brings
to the consumer’s mind the idea of communication,
distance, travel, or movement, such as used in
the terms “telephone,” “telegraph,” “television,”
and “teleport.” (footnotes omitted).
(Brief at 2-3).

We find that the marks are substantially similar in
terms of appearance, differing only by a single letter. We
also find that the marks are essentially identical in terms
of sound. In terms of connotation and commercial
impression, we are not convinced that purchasers and
potential purchasers of the parties’ respective services
would scrutinize the marks so closely as to make a
distinction between “inteli-” and “tele-” as applicant
Ser No. 78387294
4
argues. It must be remembered that the test is not whether
marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their commercial impression that
confusion as to the source of the goods and/or services
offered under the respective marks is likely to result.
Even assuming, arguendo, that purchasers and potential
purchasers did make the distinction argued by applicant,
there is no indication in the record that either mark,
INTELICASH or INTELECASH, as a whole, means anything in
particular. Purchasers and potential purchasers are likely
to view each mark as an arbitrary or coined mark with no
apparent meaning. Given the points of similarity between
the marks in terms of appearance and sound, we cannot
conclude that the connotations and overall commercial
impressions of the marks are so different that confusion is
unlikely to result from use of the marks on similar or
related goods.
Applicant argues that this case is similar to the
situations in National Distillers & Chemical Corp. v.
William Grant & Sons, Inc., 505 F.2d 719, 184 USPQ 34 (CCPA
1974) [the marks DUVET and DUET, both for alcoholic
beverages, are not confusingly similar] and Plough Inc. v.
Kreis Laboratories, 314 F.2d 635, 136 USPQ 560 (9th Cir.
Ser No. 78387294
5
1963) [the marks COPA TAN and COCOA TAN, both for suntan
lotion, are not confusingly similar]. However, in the
National Distillers case, the court found that the public
could clearly distinguish between the foreign word DUVET
and the English word DUET which has a recognized meaning.
In the Plough Inc. case, the court found that the marks
COPA TAN and COCOA TAN were different in appearance and
sound, and that the mark COCOA TAN had a suggestive meaning
when used in connection with suntan lotion. In this case,
the marks INTELICASH and INTELECASH are highly similar in
terms of appearance, essentially identical in terms of
pronunciation, and neither mark, in its entirety, has an
apparent meaning. Thus, we find that this case is
distinguishable from both the National Distillers and the
Plough Inc. cases.
We next turn then to a consideration of the parties’
respective services, their channels of trade and
purchasers. Applicant’s services are identified as “debit
card services, namely, the issuance of debit cards to
consumers and the extension of debit card services to
consumers.” The services in the cited registration are set
forth as “business services, namely, electronic measuring,
tracking, monitoring and controlling prepayments of goods
and services by the public, in connection with various
Ser No. 78387294
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account numbers as issued on debit cards, prepaid telephone
calling cards, and other media.” The examining attorney
argues:
The applicant’s identified services are
substantially related to the registrant’s
services. The applicant’s services and
registrant’s services involve debit cards, and
feature services related to debit cards. These
services travel in the same channels of trade.
Upon viewing the marks which create the same
commercial impression used with such closely
related services, consumers would mistakenly
believe that the parties’ debit card services
emanate from a common source.

….

In fact, applicant’s services, namely, the
issuance of debit cards to customers and the
extension of debit card services to consumers
could include the issuance of debit cards and the
extension of debit card services to “business
consumers.” Arguably, applicant could issue
[debit] cards and extend debit card services to
business consumers, as well as the general
public. Since the wording “extension of debit
card services to consumers” is extremely broad,
it is presumed that the application encompasses
all types of debit card services that are
normally offered to any of the various types of
consumers, including those described in the
registrant’s identification, and that these
services move in all normal channels of trade and
that they are available to all potential
customers. (citation omitted). Moreover, the
registrant’s services, namely, “controlling
prepayments of goods and services by the public
in connection with various account numbers as
issued on debit cards” could encompass the
applicant’s services, namely, “the extension of
debit card services to consumers.”
(Brief at 6-7).

Ser No. 78387294
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Applicant, on the other hand, argues:

The channels of trade for the services at issue
here are wholly distinct. Because the same
persons will not be exposed to both services,
there can be no likelihood of confusion. The
applicant’s services are directed to end
consumers. The registrant’s services, by
contrast, are directed to businesses that serve
end consumers. This distinction is made clearly
and unambiguously in both descriptions: the
applicant’s services are debit card issuance and
debit card services “to consumers,” while the
registrant’s services are “business” services.
The applicant’s services do not include the
issuance of debit cards to businesses, and the
registrant’s services do not include any services
that would be of interest to, or would be
marketed to, end consumers.
(Brief at 4).

It is a general rule that goods or services need not
be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is enough
that goods or services are related in some manner or that
some circumstances surrounding their marketing are such
that they would be likely to be seen by the same persons
under circumstances which could give rise, because of the
marks used or intended to be used therewith, to a mistaken
belief that they originate from or are in some way
associated with the same producer or that there is an
association between the producers of each parties’ goods or
services. In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991), and cases cited therein. Moreover, the greater the
Ser No. 78387294
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degree of similarity between the applicant’s mark and the
cited registered mark, the lesser the degree of similarity
between the applicant’s goods or services and the
registrant’s goods or services that is required to support
a finding of likelihood of confusion. See In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re
Concordia International Forwarding Corp., 222 USPQ 355
(TTAB 1983).
Applying these principles in this case, we find that
the examining attorney has failed to establish that
applicant’s and registrant’s services are similar or
related in such a way that would result in source
confusion, even if marketed under the very similar marks
herein.
Applicant’s recitation of services limits the class of
purchasers of its services to “consumers.” The services in
the cited registration are identified as “business
services,” and thus the class of purchasers of registrant’s
services is limited to businesses. We are not persuaded by
the examining attorney’s argument that the purchasers of
applicant’s and registrant’s services overlap. The
examining attorney argues that applicant’s services could
include the issuance of debit cards and the extension of
debit card services to “business consumers.” However, this
Ser No. 78387294
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is not a fair reading of applicant’s recitation of
services. The use of “consumers” therein is understood to
mean ordinary consumers. Thus, we agree with applicant
that its services and registrant’s services, as identified,
are marketed to different classes of purchasers.
Further, although the examining attorney argues that
the respective services travel in the same channels of
trade, she offered no evidence to support this argument.
On the contrary, applicant’s and registrant’s services, as
identified, would appear to travel in different channels of
trade. Applicant’s services are in the nature of financial
services that are marketed to consumers whereas
registrant’s services are electronic measuring, tracking,
monitoring and control services that are marketed to
businesses.
In addition, the examining attorney argues that
registrant’s services of “controlling prepayments of goods
and services by the public in connection with various
account numbers as issued on debit cards” could encompass
applicant’s services of “the extension of debit card
services to consumers.” However, this argument fails to
consider, as discussed above, the limitations as to the
classes of purchasers of applicant’s and registrant’s
services.
Ser No. 78387294
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Finally, the examining attorney argues that
applicant’s and registrant’s services are related because
both are debit card services. Of course, applicant’s
services are identified as debit card services and
registrant’s services of electronic measuring, tracking,
monitoring and controlling prepayments of goods and
services by the public, in connection with various account
numbers as issued on debit cards generally may be
characterized as debit card services. However, to
demonstrate that goods and/or services are related, it is
not sufficient that a particular term may be found which
may generically describe the goods and/or services. See
General Electric Company v. Graham Magnetics Incorporated,
197 USPQ 690 (TTAB 1977); and Harvey Hubbell Incorporated
v. Tokyo Seimitsu Co., Ltd., 88 USPQ 517 (TTAB 1975).
Where, as in this case, the respective services on
their face, do not appear to be similar or related, it is
incumbent on the examining attorney to present evidence
establishing such similarity or relationship. The
examining attorney’s mere argument and conclusory
assertions are insufficient for this purpose.
In sum, we find that there is no likelihood of
confusion here. As identified, applicant’s and
registrant’s respective services, as well as the trade
Ser No. 78387294
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channels and classes of purchasers, appear to be too
dissimilar and unrelated for any confusion to be likely,
even if marketed under highly similar marks.
Decision: The refusal to register is reversed.