Lewis County Primary Care Center, Inc.v.Leap Medical LLC

Trademark Trial and Appeal Board

Sep 27, 2018

No. 91233077 (T.T.A.B. Sep. 27, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 27, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Lewis County Primary Care Center, Inc.
v.
Leap Medical LLC
_____

Opposition No. 91233077
_____

Jack A. Wheat of McBrayer McGinnis Leslie & Kirkland PLLC,
for Lewis County Primary Care Center, Inc.
Michael D. Stewart of the Law Offices of Michael D. Stewart,
for Leap Medical LLC.
_____

Before Mermelstein, Greenbaum and Larkin,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Leap Medical LLC (“Applicant”) has filed two applications seeking registration on
the Principal Register of the marks LEAP MEDICAL (in standard characters) and
LEAP MEDICAL INSPIRING BETTER HEALTH and design (“LEAP MEDICAL
Design Mark”), displayed as , for “Education service, namely,
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providing classes, seminars, workshops in the field of health and wellness” in
International Class 41, and a third application for the LEAP MEDICAL Design Mark
for a
Full line of durable medical equipment in the fields of
allergology, anesthesiology, cardiology, dermatology,
emergency medicine, endocrinology, ergonomics, family
and general practice, gastroenterology, gerontology,
internal medicine, internal disorders, nutrition, neurology,
obstetrics and gynecology, occupational therapy, oncology,
ophthalmology, orthopedics, pathology, pediatrics,
physical therapy, pulmonology, psychiatry, radiology,
respiratory therapy, speech therapy and surgery, in
International Class 10.1
Lewis County Primary Care Center, Inc. (“Opposer”) opposes registration
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), asserting a
likelihood of confusion with its mark LEAP (in standard characters), registered on
the Principal Register for “medical testing services, namely, fitness evaluations;
health care services, namely, health screenings” in International Class 44,2 and for
Conducting medical physical evaluations; Health care;
Health care services, namely, wellness programs; Medical
testing services, namely, fitness evaluation; Occupational
medicine services; Providing assistance, fitness evaluation
and consultation to corporate clients to help their

1 Application Serial Nos. 87112244, 87112294 and 87112286, respectively, were filed on July
21, 2016, based upon Applicant’s allegation of a bona fide intention to use each mark in
commerce under Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b). MEDICAL is
disclaimed in each application. Application Serial Nos. 87112294 and 87112286 (for the
LEAP MEDICAL Design Mark) claim the colors green and blue as a feature of the mark,
which is described as follows: “The mark consists of the word ‘LEAP’ is [sic] in all caps and
in the color green and the word ‘MEDICAL’ is in all lower case and in the color blue. The
word ‘LEAP’ sits above the word ‘MEDICAL’ and both words are with in [sic] a circle with
the bottom half of the circle listing out the words in blue ‘INSPIRING BETTER HEALTH’
and the top half of the circle made up of a green mark on the left side and a blue mark on the
right side.”
2 Reg. No. 3276666 issued on August 7, 2007; renewed.
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employees make health, wellness and nutritional changes
in their daily living to improve health; Providing
assistance, fitness evaluation and consultation to
individuals to help them make health, wellness and
nutritional changes in their daily living to improve health;
Providing wellness services, namely, personal
assessments, personalized routines, maintenance
schedules, and counseling; Wellness and health-related
consulting services, in International Class 44.3
Opposer attached to the notice of opposition copies of its pleaded registrations,
printed from the USPTO Trademark Electronic Search System (TESS) database,
showing that the registrations were then subsisting and owned by Opposer.4 See
Trademark Rule 2.122(d), 37 C.F.R. § 2.122(d). Opposer also asserts that it has made
prior use of LEAP “in association with healthcare and wellness services.” 1
TTABVUE 4-5, ¶ 2.
Applicant, in its answer, admitted that Opposer owns the two pleaded
registrations, denied the other salient allegations, and asserted several putative
affirmative defenses setting forth its counterpoints to Opposer’s allegations.
I. Record
The record includes the pleadings and, by operation of Trademark Rule
2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the files of the applications subject to the notice
of opposition.
In addition, Opposer submitted:

3 Reg. No. 4390836 issued on August 27, 2013, Section 8 Affidavit accepted, Section 15
Affidavit acknowledged.
4 1 TTABVUE 8-18.
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1. the Testimony Declaration of Jerry Ugrin, Opposer’s CEO, with exhibits
consisting of a one-page excerpt from Opposer’s website, and copies of four,
one-page leaflets, demonstrating Opposer’s use of its LEAP mark in connection
with its services,5 and
2. the (near verbatim) corroborating Testimony Declaration of Tracy McGuire,
Opposer’s Marketing & Community Relations Director.6
Applicant submitted no testimony or other evidence, and only Opposer filed a
brief. Nonetheless, Opposer, as plaintiff in this proceeding, must prove its standing
and its claims by a preponderance of the evidence. See Cerveceria Centroamericana,
S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989).
II. Standing
Opposer has established its standing by properly introducing into evidence its
pleaded registrations. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d
1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Additionally, Opposer’s
witnesses both referenced and attested to the validity and Opposer’s ownership of the
registrations. Ugrin Test. Decl, 6 TTABVUE 3-4, ¶¶ 7-8; McGuire Test. Dec., 7
TTABVUE 4-5, ¶¶ 7-8. Further, Applicant does not dispute Opposer’s standing.

5 6 TTABVUE.
6 7 TTABVUE.
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III. Priority
Because Opposer’s pleaded registrations are of record, priority is not at issue with
respect to the services identified in those registrations. King Candy Co., Inc. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Opposer’s witnesses
also testified as to Opposer’s prior use of the mark LEAP since 2005 in association
with wellness and occupational medicine services, including “medical testing and
evaluation relating to physical examinations; physical fitness; lipid profile (blood
cholesterol levels); pulmonary function testing; biometrics (weight, blood pressure,
and body mass index); vision and hearing testing; substance abuse testing; dietician
counseling and other educational programs.” Ugrin Test. Dec., 6 TTABVUE 3-4, ¶ 4-
5; McGuire Test. Dec., 7 TTABVUE 3, ¶¶ 4-5.
Applicant presented no testimony or other evidence, and therefore has not
established any use of its marks prior to its July 21, 2016 constructive use filing date
of its applications. See Syngenta Crop Prot., Inc. v. Bio-Chek LLC, 90 USPQ2d 1112,
1119 (TTAB 2007) (“[A]pplicant may rely without further proof upon the filing date
of its application as a ‘constructive use’ date for purposes of priority.”).
IV. Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in 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 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
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the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). We discuss below these and other relevant factors.
See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947
(Fed. Cir. 2006) (even within the du Pont list, only factors that are “relevant and of
record” need be considered).
A. The similarity or dissimilarity of the marks
Under this du Pont factor, we compare the marks in their entireties for
similarities and dissimilarities in appearance, sound, connotation and commercial
impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1160 (Fed. Cir. 2014). “The proper test is not a side-by-side comparison
of the marks, but instead whether the marks are sufficiently similar in terms of their
commercial impression such that persons who encounter the marks would be likely
to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted).
The marks “‘must be considered … in light of the fallibility of memory ….’” In re St.
Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting San
Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1
(CCPA 1977)). The proper focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression of trademarks. See St.
Helena Hosp., 113 USPQ2d at 1085; Geigy Chem. Corp. v. Atlas Chem. Indus., Inc.,
438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971).
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Our analysis cannot be predicated on dissection of the involved marks. Stone Lion,
110 USPQ2d at 1161. Rather, we are obliged to consider the marks in their entireties.
Id.; 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.”). Nonetheless, 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 a consideration of the marks in their entireties. Stone
Lion, 110 USPQ2d at 1161. For instance, as the Federal Circuit has observed, “[t]hat
a particular feature is descriptive or generic with respect to the involved goods or
services is one commonly accepted rationale for giving less weight to a portion of a
mark ….” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
When considered in their entireties, we find Opposer’s LEAP mark and
Applicant’s LEAP MEDICAL mark and LEAP MEDICAL Design Mark,
, to be very similar in appearance, sound, connotation and
commercial impression, due to the shared term LEAP. All of Applicant’s marks
contain Opposer’s arbitrary mark, to which Applicant has added the descriptive term
MEDICAL and, in the case of the LEAP MEDICAL Design Mark, the slogan
INSPIRING BETTER HEALTH and a design element. While there is no rule that a
likelihood of confusion is present where one mark encompasses another, in this case,
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as in many others, the fact that Applicant’s marks include the entirety of Opposer’s
LEAP mark increases the similarity between them. See, e.g., Wella Corp. v. Cal.
Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (finding
CALIFORNIA CONCEPT marks substantially similar to prior mark CONCEPT);
Coca-Cola Bottling Co. of Memphis, Tenn., Inc. v. Joseph E. Seagram and Sons, Inc.,
526 F.2d 556, 188 USPQ 105 (CCPA 1975) (applicant’s mark BENGAL LANCER for
club soda, quinine water and ginger ale is likely to cause confusion with BENGAL for
gin).
There is no evidence that LEAP has any meaning or significance when applied to
the identified goods or services, and there is no evidence of use by third parties of
similar marks on similar goods or services that might dilute the source-identifying
capacity of LEAP for those goods and services. On the other hand, “MEDICAL” is
highly descriptive, if not generic, of medical equipment and the subject matter of
Applicant’s educational services, i.e., health and wellness, and appropriately has been
disclaimed in each application. See In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1533-34 (Fed. Cir. 1997). Descriptive matter typically is less significant or less
dominant when comparing marks. See Cunningham v. Laser Golf Corp., 55 USPQ2d
at 1846 (quoting Nat’l Data Corp., 224 USPQ at 752 (the “descriptive component of a
mark may be given little weight in reaching a conclusion on likelihood of confusion”)).
We find that to be the case here, where consumers likely will view the term MEDICAL
in Applicant’s marks in its descriptive sense, rather than as a source-distinguishing
element.
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The prominence of the term LEAP is further enhanced by its placement as the
initial literal element in each of Applicant’s marks. See Palm Bay Imps. Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed
in the mind of a purchaser and remembered”); see also Century 21 Real Estate Corp.
v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon
encountering the marks, consumers must first notice the identical lead word).
LEAP also is the most visually prominent element in Applicant’s LEAP MEDICAL
Design Mark, , and it has more source identifying capability than the
slogan INSPIRING BETTER HEALTH, a highly suggestive and laudatory phrase
touting the excellence of Applicant’s identified goods and services. The placement of
the slogan as part of a circle that frames the large term LEAP focuses the eye on the
prominent element LEAP. With regard to the design element, although we assess
each mark in its entirety, wording often is considered the dominant feature of a mark
comprising both literal and design elements because it is most likely to indicate the
source of the goods and services. See Jack Wolfskin Ausrustung Fur Draussen GmbH
& Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129,
1134 (Fed. Cir. 2015); In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed.
Cir. 2012). The words are likely to make a greater impression upon purchasers than
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the designs and would be remembered by them and used by them to request the goods
and services. Viterra, 101 USPQ2d at 1908 and 1911 (Fed. Cir. 2012) (citing CBS Inc.
v. Morrow, 708 F. 2d 1579, 218 USPQ 198, 200 (Fed. Cir 1983)). This general principle
applies here, where the design element would not be verbalized.
Finally, we note that Opposer’s LEAP mark and Applicant’s LEAP MEDICAL
mark are registered in standard characters and thus not limited to any particular
depiction. The rights associated with a standard character mark reside in the wording
and not in any particular display. In re RSI Sys. LLC, 88 USPQ2d 1445, 1448 (TTAB
2008); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988);
TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”)
Section 1207.01(c)(iii) (Oct. 2017). We must consider both standard character marks
“regardless of font style, size, or color,” Citigroup Inc. v. Capital City Bank Grp. Inc.,
637 F.3d 1344, 98 USPQ2d 1253, 1258‒59 (Fed. Cir. 2011), including iterations
emphasizing the shared term LEAP. We likewise must consider that Opposer’s LEAP
mark may be depicted in stylization identical to the wording in Applicant’s LEAP
MEDICAL Design Mark. Id.
Accordingly, we find that LEAP is the dominant element in each of Applicant’s
marks, and accord that term more weight than the other elements of Applicant’s
marks in our likelihood of confusion analysis. In making this finding, we do not ignore
the presence of the additional wording and/or design in Applicant’s marks. However,
for the reasons discussed above, consumers are more likely to remember the term
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LEAP than the other elements of Applicant’s marks. Nat’l Data Corp., 224 USPQ at
751.
While there are some specific differences between Applicant’s and Opposer’s
marks, we find that in their entireties, the marks are very similar in appearance,
sound, and connotation due to the common presence of the identical literal term
LEAP, and that the marks convey similar commercial impressions. The du Pont
factor of the similarity of the marks thus favors a finding of likelihood of confusion.
B. Relatedness of the Goods and Services and Channels of Trade
We next address the du Pont factors involving the relatedness of the goods and
services and the relatedness of established, likely to continue channels of trade. We
base our evaluation on the goods and services as they are identified in the
applications and pleaded registrations. See Dixie Rests., 41 USPQ2d at 1534; see also
Stone Lion, 110 USPQ2d at 1171; Octocom Sys. Inc. v. Hous. Computs. Servs. Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). As to Opposer’s rights based
on its previous use of LEAP, Opposer must establish through evidence the types of
services provided thereunder and their channels of trade.
It is settled that the respective goods and services need not be similar or even
competitive in order to find that they are related for purposes of our likelihood of
confusion analysis. “Instead, likelihood of confusion can be found ‘if the respective
products 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., 101 USPQ 2d at 1722 (quoting 7-Eleven Inc. v.
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Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). See also On-line Careline Inc. v. Am.
Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000). The issue is not
whether purchasers would confuse the goods and services, but rather whether there
is a likelihood of confusion as to their source. L’Oreal S.A. v. Marcon, 102 USPQ2d
1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
1. Application Serial Nos. 87112244 and 87112294 (Class 41)
As discussed above, Opposer has established use of its mark LEAP for “dietician
counseling and other educational programs.” Ugrin Test. Dec., 6 TTABVUE 3-4, ¶ 4-
5; McGuire Test. Dec., 7 TTABVUE 3, ¶¶ 4-5. Opposer’s documentary evidence also
indicates that Opposer provides “dietician counseling” and “educational programs” as
part of the LEAP wellness and occupational health program. 6 TTABVUE 6 and 10.
While neither the testimony nor the documentary evidence provides further specifics,
we observe that “dietician counseling” teaches individuals to improve their eating
habits. We find that Opposer’s educational programs offered as part of a wellness and
occupational health program and dietician services are complementary to Applicant’s
identified health and wellness classes, seminars, and workshops. We further find that
all of the foregoing services would move through the same channels of trade, such as
health care clinics, to the same classes of consumers, namely, those who are in need
of monitoring or interested in improving their nutrition and overall health and
wellness.
2. Application Serial No. 87112286 (Class 10)
We reach the opposite conclusion regarding relatedness with respect to
Applicant’s durable medical equipment. The only information in the record
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concerning the purported relatedness of the goods and services consists of identical
conclusory statements by Opposer’s witnesses that “health care equipment is closely
related to the broad services which are the subject of Plaintiff’s registrations
including the ‘836 Registration (Exhibit 2) which is registered for, among other
things, ‘Health care’ and ‘Medical testing services.’” Ugrin Test. Dec., 6 TTABVUE 4-
5, ¶ 10; McGuire Test. Dec., 7 TTABVUE 4, ¶ 10. However, durable medical
equipment is not related on its face to health care and medical testing services other
than in the most general sense that medical equipment sold to providers of health
care and medical testing services may be used by those providers in the course of
providing the services to their patients. The Federal Circuit has held that the mere
possibility of such use may be an insufficient basis on which to conclude that goods
and services would be viewed as originating from the same source when sold under
similar marks. See Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350,
1355-56 (Fed. Cir. 2004). Opposer presented no evidence demonstrating that
consumers of its health care services, identified in part as “Medical testing services,
namely, fitness evaluation” (emphasis added), would even be exposed to “durable
medical equipment,” or the marks for such goods, much less that they would be the
purchasers of such goods.
Based on this record, we cannot find that the goods and services are commercially
related, or that they move through the same channels of trade to the same classes of
purchasers. As the Federal Circuit has stated, “[w]e are not concerned with mere
theoretical possibilities of confusion, deception, or mistake or with de minimis
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situations but with the practicalities of the commercial world, with which the
trademark laws deal.” Elec. Design & Sales, Inc. v. Elec. Data Sys. Corp., 954 F.2d
712, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992) (citation omitted).
V. Conclusion
We have carefully considered all of the arguments and evidence of record as they
pertain to the relevant du Pont factors, and find that the marks are more similar than
they are different, and that the Class 41 services identified in application Serial Nos.
87112244 and 87112294 are related to Opposer’s common law “dietician counseling”
and “educational program” services, and are offered in the same channels of trade to
the same consumers. Accordingly, Opposer has established, by a preponderance of
the evidence, that Applicant’s LEAP MEDICAL mark in application Serial No.
87112244 and Applicant’s LEAP MEDICAL Design Mark in application Serial No.
87112294 are likely to cause consumer confusion when used in association with the
services identified therein.
Notwithstanding the similarity of the marks, however, Opposer has not shown
that the Class 10 goods identified in application Serial No. 87112286 are sufficiently
related to any of the services identified in the pleaded registrations or for which
Opposer has established prior use. Because Opposer has not established that the
goods identified in the application are similar or sufficiently related to Opposer’s
identified services, Opposer has not carried its burden to establish, by a
preponderance of the evidence, that Applicant’s LEAP MEDICAL Design Mark is
likely to cause consumer confusion when used on the Class 10 goods identified in that
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application. See, e.g., N. Face Apparel Corp. v. Sanyang Indus. Co., 116 USPQ2d 1217,
1230-34 (TTAB 2015) (dismissing opposition as to classes of goods and services for
which opposer did not establish relatedness to its goods); Itel Corp. v. Ainslie, 8
USPQ2d 1168, 1171 (TTAB 1988) (dismissing opposition in which marks were
identical but opposer filed to prove relatedness of the goods and services).
Decision: The opposition is sustained as to Application Serial Nos. 87112244 and
87112294 for the Class 41 services, and dismissed as to Application Serial No.
87112286 for the Class 10 goods.