Kirby Plastic Surgery, PLLC

Trademark Trial and Appeal Board

Sep 30, 2020

88181568 (T.T.A.B. Sep. 30, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 30, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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Kirby Plastic Surgery, PLLC
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Serial No. 88181568
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Enrique Sanchez, Jr. of Whitaker Chalk Swindle & Schwartz PLLC,
for Kirby Plastic Surgery, PLLC.
Jules Dean, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____

Before Bergsman, Dunn, and Hudis,
Administrative Trademark Judges.

Opinion by Dunn, Administrative Trademark Judge:
Kirby Plastic Surgery, PLLC (“Applicant”) seeks registration on the Principal
Register of the mark shown below for “medical spa services, namely, elective,
minimally and non-invasive cosmetic and body fitness therapies” in International
Class 44.1

1 Application Serial No. 88181568 was filed on November 5, 2018, based on Applicant’s
allegation of first use anywhere and first use in commerce at least as early as September 14,
2018, pursuant to Trademark Act Action 1(a), 15 U.S.C. §1051(a). In this Decision, the
Trademark Status and Document Retrieval (TSDR) citations refer to the downloadable .pdf
version of the documents available from the electronic file database for the involved
application. The TTABVUE citations refer to the Board’s electronic docket, with the first
Serial No. 88181568
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The application includes the statements that: (1) color is not claimed as a feature
of the mark; (2) the mark consists of the stylized design of the letter ”K” with the word
”KALOS” below the stylized design in a stylized font, and that (3) the English
translation of the word KALOS in the mark is “good, noble, handsome, or beautiful”.
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark as applied
to the services identified in the application, so resembles the registered mark KALOS
HEALTH GOLD PLUS (in standard characters, HEALTH GOLD disclaimed) for
“health care; health care in the nature of health maintenance organizations; health
care services offered through a network of health care providers on a contract basis;
health care services, namely, disease management programs; health care services in
the nature of health maintenance organizations for chronic health conditions; home
health care services; managed health care services; home health care services in the
nature of health maintenance organizations for chronic health conditions,” in
International Class 442 on the Principal Register as to be likely to cause confusion, to
cause mistake, or to deceive.

number referring to the docket entry and the second number, if applicable, referring to the
page within the entry.
2 Registration No. 5630557, issued on December 18, 2018.
Serial No. 88181568
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When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. The Appeal is fully briefed. We affirm the
refusal to register.
I. Likelihood of Confusion
Our determination under Trademark Act 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 confusion. In re E. I. DuPont 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). We must consider each relevant DuPont factor
for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376,
129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). 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).
A. Similarity or Dissimilarity of the Services and Trade Channels
We must determine whether the degree of relatedness of the services rises to such
a level that consumers would mistakenly believe the respective services emanate
from the same source. We make our determination regarding the similarities between
Applicant’s services and the registered services based on how they are identified in
the application and registration. Octocom Sys. Inc. v. Hous. Comput. Servs., Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian Imperial Bank v. Wells
Serial No. 88181568
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Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Moreover, registration
must be refused in a particular class if Applicant’s mark for any of its identified
services in that class is likely to cause confusion with the Registrant’s mark for any
of its identified services. See SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937,
938-39 (Fed. Cir. 1983) (holding that a single good from among several may sustain
a finding of likelihood of confusion); Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp.,
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 item that comes within the
identification of goods or services in the application or registration).
The cited registration identifies “health care; health care in the nature of health
maintenance organizations; health care services offered through a network of health
care providers on a contract basis; health care services, namely, disease management
programs; health care services in the nature of health maintenance organizations for
chronic health conditions; home health care services; managed health care services;
home health care services in the nature of health maintenance organizations for
chronic health conditions.” We find, based on the semicolon separating “health care”
from the other services in the registration, that the registered “health care” services
are a separate category of services, and an independent basis for the Section 2(d)
refusal. In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1166 (TTAB 2013)
(“Under standard examination practice, a semicolon is used to separate distinct
categories of goods or services.”). When comparing the services, we focus on the
registered “health care” services.
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The record defines “health care” as “efforts made to maintain or restore physical,
mental, or emotional well-being especially by trained and licensed professionals” and
“the organized provision of medical care to individuals or a community”3 Applicant
identifies its services as “medical spa services, namely, elective, minimally and non-
invasive cosmetic and body fitness therapies.” We take judicial notice that “medical”
is defined as “of, relating to, or concerned with physicians or the practice of medicine;”
“elective” is defined as “relating to, being, or involving a nonemergency medical
procedure and especially surgery that is planned in advance and is not essential to
the survival of the patient;” and “therapies” is defined as “therapeutic medical
treatment of impairment, injury, disease, or disorder.”4 As is clear from the wording,
the definition of “health care” is not restricted to mandatory, necessary, or emergency
therapeutic efforts to maintain or restore physical well-being, but includes elective
procedures. In addition, the definition of “health care” is not restricted to therapeutic
efforts to maintain or restore non-cosmetic physical well-being, but encompasses
cosmetic therapies. Finally, the health care definition specifies efforts by “trained and
licensed professionals,” and so includes the physicians required to perform “medical”
spa services offering “medical” therapies.

3 December 23, 2019 Office Action at TSDR 5, 12 citing Dictionary.com based on the Random
House Unabridged Dictionary (2020). We do not see a substantive difference in the definitions
from two different dictionaries.
4 The definitions were accessed from the online dictionary Merriam-Webster, www.merriam-
webster.com, on September 29, 2020. 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).
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Based on the wording of the services as identified in the application and cited
registration, we find the registered “health care” services include and so are legally
identical to Applicant’s “medical spa services, namely, elective, minimally and non-
invasive cosmetic and body fitness therapies.” See In re Fiesta Palms LLC, 85
USPQ2d 1360, 1362 (TTAB 2007) (“Inasmuch as we do not read limitations into
applicant's identification of services, its casino services would include all types of
casino services including casino services offered to preferred customers identified by
special identification cards. Therefore, the services must be considered to be identical
inasmuch as they overlap.”); In re Equitable Bancorporation, 229 USPQ 709, 710
(TTAB 1986) (Turning first to the services, applicant's identification of services, i.e.,
‘banking services,’ encompasses the services specified in the cited registration,
namely, ‘banking services rendered through twenty-four (24) hour teller machine
services.’ Thus, the services must be presumed to be the same for purposes herein.”).
Where appropriate, a finding on relatedness may be made on the identifications
themselves, without further evidence presented by the parties. Hewlett-Packard Co.
v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002). Here,
the overlap in Applicant’s services and Registrant’s services is clear from the
descriptions in the application and registration. This is corroborated from the
following excerpts appearing on Applicant’s website showing that as a subservice of
its plastic surgery practice, Applicant offers health care in the form of medical
Serial No. 88181568
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treatment to patients by physicians, including invasive treatment involving the use
of injection:5
Our award-winning team brings a combined 40+ years of expertise in aesthetic
medicine to offer an unparalled medical spa experience.

The Medical Spa at Kirby Plastic Surgery

Our highly trained team of medical professionals have a passion for helping
patients reveal their natural radiance and a reputation for exceeding
expectations.

Women rely on Botox6 to reduce frown lines and crow’s feet and stabilize brows,
which refreshes your appearance for up to 4 months.

Hydrafacial … can be combined with most skin and injectable treatments. ….
Get more from your Hydrafacial with premium boosts available only through
a licensed physian: BrightAlive for discoloration, Rozatrol for rosacea,
DermaBuilder for fine lines, or CTGF for fine lines and pigmentation.

Lasers and sclerotherapy7 are excellent options to treat bothersome lines.

In support of the finding that the registered health care services encompass
Applicant’s medical spa services, the record includes evidence of third-party websites
showing use of the same mark to identify health care centers offering both health
care services and medical spa services, namely Virginia Mason Medical Center,
Butler Health System, Pritikin Longevity Center & Spa, ARH Appalachian Regional

5 August 19, 2019 Response, at TSDR 20, 30, 35, 37-38, 43.
6 We take judicial notice that “Botox” is defined as a trademark for “a preparation of
botulinum toxin” and as a verb “to inject botulinum toxin into (part of the body and especially
part of the face) especially for cosmetic purposes (as to minimize wrinkles).” Merriam-
Webster, https://www.merriam-webster.com/dictionary/Botox. Accessed 29 Sep. 2020.
7 We take judicial notice that “sclerotherapy” is defined as “the injection of a sclerosing agent
(such as saline) into a varicose vein to produce inflammation and scarring which closes the
lumen and is followed by shrinkage.” Merriam-Webster, https://www.merriam-
webster.com/dictionary/sclerotherapy. Accessed 29 Sep. 2020.
Serial No. 88181568
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Healthcare, Inova Health System, and Franciscan Health.8 Evidence that consumers
encounter one mark designating a single source for the services of both parties
supports a finding that the services are related. Hewlett-Packard, 62 USPQ2d at
1005; In re I-Coat Co., 126 USPQ2d 1730, 1738 (TTAB 2018). Third-party
advertisements suggest that the public is accustomed to seeing health care centers
that offer medical spa services, and thus perceives them as related services. In re
Detroit Athletic Co., 903 F3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (“This
evidence suggests that consumers are accustomed to seeing a single mark associated
with a source that sells both its own branded clothing (as does the Detroit Athletic
Club) as well as sports-teams-branded clothing (as does DACo).”). The record also
includes a medical spa industry article that defines a medical spa as “a hybrid
between an aesthetic medical center and a day spa,” stating “The vast majority of
treatments you receive at medical spas, such as laser treatments, Botox and fillers,
are considered medical treatments.”9
The gist of Applicant’s argument that the services are unrelated has two parts.
One, its medical treatment of patients is not healthcare because the patients seek
improved appearance rather than a cure of illness, and the medical treatment is not
covered by health insurance, and two, Registrant’s website demonstrates that its
health care services do not include medical spa services.10 We disagree that patient

8 September 4, 2019 Office Action at TSDR 7-23, 24-39, 40-51, 52-56, 57-64, and 65-68.
9 November 26, 2019 Response at TSDR 45.
10 4 TTABVUE 13-14. While we carefully considered all evidence, because Applicant’s brief
includes confusing double citations and citations to Office actions or responses dated before
Serial No. 88181568
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intent or the payment model outweighs the fact that Applicant’s services involve
physicians performing invasive procedures on patients. Medical treatment is offered
as part of healthcare, and there is no dispute that Applicant offers medical treatment.
We also disagree that we may give any consideration to the health care services
Registrant actually offers when determining the scope of the services listed in the
registration. In making our determination regarding the relatedness of Applicant’s
and Registrant’s services, we must look to them as identified in the application and
cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Hous.
Computs. Servs. Inc., 16 USPQ2d at 1787 (“The authority is legion that the question
of registrability of an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods, the particular channels of
trade or the class of purchasers to which the sales of goods are directed.”)).
We conclude the record fully supports our finding that Applicant’s and
Registrant’s services are not just related but identical in part.
We do not find persuasive Applicant’s evidence that its services travel in different
trade channels than the registered health care services, or that the respective services
appeal to consumers who are sophisticated to restrict the scope of the cited
registration. Because Registrant’s broadly worded health care services encompass

the subject application was filed, in many instances it was not clear to what evidence
Applicant referred.
Serial No. 88181568
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Applicant’s more narrow “medical spa” services, we find the respective services travel
in the same channels of trade and are offered to the same prospective purchasers. In
re Detroit Athletic Co., 128 USPQ2d at 1052 (“The third DuPont factor—like the
second factor—must be evaluated with an eye toward the channels specified in the
application and registration, not those as they exist in the real world.”). See also In
re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (absent
restrictions in the application and registration, identical goods are presumed to travel
in the same channels of trade to the same class of purchasers; the Board was entitled
to rely on this legal presumption in determining likelihood of confusion).
B. Similarity or Dissimilarity of the Marks
We consider the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation, and commercial impression. See Palm Bay Imps.,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 136, 73 USPQ2d
1689 (Fed. Cir. 2005). “Similarity in any one of these elements may be sufficient to
find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742,
1746 (TTAB 2018), aff’d, Slip Op. No. 18–2236 (Fed. Cir. Sept. 13, 2019) (mem)
(quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). The test, under the first
DuPont factor, is whether the marks are sufficiently similar in terms of their overall
commercial impression that confusion as to the source of the services offered under
the respective marks is likely to result. Coach Servs. Inc. v. Triumph Learning, 101
USPQ2d at 1721 (quoting Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82
USPQ2d 1901, 1905 (TTAB 2007)). Where, as here, the services are identical or
Serial No. 88181568
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virtually identical, the degree of similarity between the marks necessary to support
a determination that confusion is likely declines. See Bridgestone Americas Tire
Operations, LLC v. Fed. Corp., 673 F.3d 1330, 1337, 102 USPQ2d 1061, 1064 (Fed.
Cir. 2012); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).
The proper focus is on the recollection of the average purchaser, who retains a
general impression of trademarks. In re Bay State Brewing Co., 117 USPQ2d 1958,
1960 (TTAB 2016) (citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff’d per curiam, 972 F.2d 1353 (Fed. Cir. 1992)). Here, the average
purchaser is the consumer of health care services. Recognizing that this is not how
consumers will encounter the marks, we set them forth below to aid our comparison:
Applicant’s mark Registered mark

KALOS HEALTH GOLD PLUS

There is no mechanical test to select the dominant element of a mark. Tao
Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1059 (TTAB 2017).
Nevertheless, it is well settled that one feature of a mark may be more significant
than another, and it is not improper to state that, for rational reasons, we have given
more or less weight to a particular feature of a mark in determining the commercial
impression created by the mark as long as the mark is considered in its entirety. In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). We find
Serial No. 88181568
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that the term KALOS is the dominant term in the cited mark KALOS HEALTH
GOLD PLUS.
There is nothing improper in our finding that the identical term KALOS is
dominant in both Applicant’s and Registrant’s mark, because our ultimate conclusion
rests upon a comparison of the marks in their entireties. In re Nat’l Data Corp., 224
USPQ at 751. When comparing the marks in their entireties, we find them to be
similar in sight, sound, and meaning due to this shared term, “KALOS.” Because the
registered mark appears in standard characters, Registrant would be free to adopt
the same font that appears in Applicant’s mark, further heightening the similarities
between the marks. See In re Viterra Inc., 101 USPQ2d at 1909; In re Davia, 110
USPQ2d 1810, 1814 (TTAB 2014); Trademark Rule 2.52(a).
The term KALOS, which is translated as “good, noble, beautiful” in the
application, is arbitrary or suggestive as applied to health care or medical spa
services. The words HEALTH GOLD in the registered mark are less significant
because they are descriptive or generic of Applicant’s services, and have 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).
Similarly, the word PLUS generally is not considered a distinctive term, but a term
which describes a related product from the same source. China Healthways Inst. Inc.
v. Xiaoming Wang, 491 F.3d 1337, 83 USPQ2d 1123, 1125 (Fed. Cir. 2007) (“The
addition of the word ‘PLUS’ in Wang's mark is unlikely to avoid the confusion for
Serial No. 88181568
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‘Plus’ ordinarily connotes a related superior product, not one from a different
source.”).
Turning to Applicant’s mark, we find the identical term KALOS is the dominant
element in the mark. The stylized letter K in Applicant’s mark does not create a
strong impression on its own or alter the impression created by the term KALOS.
Because it is a stylized version of the first letter of the term it precedes, the stylized
letter K emphasizes or reinforces the term KALOS in Applicant’s mark. See UMG
Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868, 1887 (TTAB 2011) (“The ‘M’ in the
first design mark above merely reinforces the first letter in MOTOWN, and the font
and square border are insignificant.”); In re Continental Graphics Corp., 52 USPQ2d
1374, 1376 (TTAB 1999) (“Indeed, the dominant role of the word CONTINENTAL in
the overall commercial impression created by the registered mark is reinforced,
rather than negated, by the inclusion in the mark of the globe design depicting
stylized continents and the inclusion of the large letter ‘C,’ which is the first letter of
the word CONTINENTAL.”). We see no support for Applicant’s contention11 that the
purchasing public would consider the letter K in the mark as designating the initial
of the last name of the founder of Applicant instead of the word KALOS which it
precedes.
In sum, we find that the overall commercial impression created by the distinctive
term KALOS is not diminished either by the addition of the stylized letter K in

11 4 TTABVUE 11.
Serial No. 88181568
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Applicant’s mark, or the additional terms HEALTH GOLD PLUS in the registered
mark, particularly when applied to services that are identical in part.
We have considered all of the arguments and evidence of record, and all relevant
DuPont factors. When we balance the DuPont factors, we conclude that confusion is
likely to occur between Applicant’s mark and Registrant’s mark
KALOS HEALTH GOLD PLUS for their respective services.

II. Decision
The refusal to register Applicant’s mark on grounds of likelihood
of confusion pursuant to Trademark Act Section 2(d) is affirmed.