Merem Capital, LLC

Trademark Trial and Appeal Board

Jan 5, 2021

87817950 (T.T.A.B. Jan. 5, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: January 5, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Merem Capital, LLC
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Serial No. 87817950
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Michael S. Denniston of Bradley Arant Boult Cummings LLP,
for Merem Capital, LLC.
Odette Martins, Trademark Examining Attorney, Law Office 123,
Susan Hayash, Managing Attorney.
_____

Before Shaw, Larkin, and Dunn,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Merem Capital, LLC (“Applicant”) seeks registration on the Principal Register of
the mark shown below (URGENT CARE disclaimed)

for services ultimately identified as “Medical services, namely, providing non-surgical
treatment of acute muscle, tendon, bone, joint and soft tissue injuries requiring
Serial No. 87817950
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immediate care on an outpatient basis from a walk-in clinic,” in International Class
44.1
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 it
so resembles the two registered marks show below, which are owned by different
entities:

for a “Comprehensive group of services in the field of orthopedics, namely, providing
post-operative rehabilitation services to patients and medical practitioners; providing
information to medical practitioners in the field of prescribing orthopedic products to
patients; rental of orthopedic products,” in International Class 44,2 and

1 Application Serial No. 87817950 was filed on March 2, 2018 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention
to use the mark in commerce. Applicant describes its mark as consisting of “the design of a
plus sign comprised of a horizontal and vertical rectangle. The middle of the vertical rectangle
has two horizontal line spaces, one above and one below where it bisects the horizontal
rectangle. Inside of the horizontal rectangle is a horizontal line. To the right of the design is
the word ‘ORTHOEXPRESS’ above the words ‘URGENT CARE.’” Color is not claimed as a
feature of the mark.
2 The cited Registration No. 3339532 issued on November 20, 2007 and has been renewed.
The registrant describes its mark as consisting of “the letter ‘R’ in the word ‘Ortho’ and the
letter ‘X’ in the word ‘Xpress’ [which] are red. All other letters are black. There are red and
black swirls above the words ‘Ortho" and ‘Xpress’.” The colors red and black are claimed as a
feature of the mark and the registrant has disclaimed the exclusive right to the
representation of the prescription symbol. The registration also covers services in Class 35
that are not discussed by the Examining Attorney.
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(ORTHO and BONE & JOINT CENTER disclaimed) for “Orthopaedic surgery
services,” in International Class 44,3 as to be likely, when used in connection with the
services identified in the application, to cause confusion, to cause mistake, or to
deceive.
When the Examining Attorney made the refusal final, Applicant appealed and
requested reconsideration, which was denied. The appeal is fully briefed.4 We affirm
the refusal to register.
I. Record on Appeal5
The record on appeal includes the following:
 USPTO electronic records regarding the cited registrations, made of record
by the Examining Attorney;6

3 The cited Registration No. 5511950 issued on July 10, 2018. The registrant describes its
mark as consisting of “‘ORTHO’ (in powder blue), ‘Xpress’ (in red), and ‘BONE & JOINT
CENTER’ (in black).” The colors powder blue, red, and black are claimed as features of the
mark.
4 Citations in this opinion to the briefs refer to TTABVUE, the Board’s online docketing
system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the
number preceding TTABVUE corresponds to the docket entry number, and any numbers
following TTABVUE refer to the page number(s) of the docket entry where the cited materials
appear.
5 Citations in this opinion to the application record, including the request for reconsideration
and its denial, are to pages in the Trademark Status & Document Retrieval (“TSDR”)
database of the United States Patent and Trademark Office (“USPTO”).
6 June 21, 2018 Office Action at TSDR 2-4; February 19, 2019 Office Action at TSDR 2-7. The
cited Registration No. 5511950 issued during prosecution of the application.
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 A dictionary definition of the term “urgent care,” and webpages regarding
the meaning of the term, made of record by the Examining Attorney;7
 Webpages listing “rehabilitation services” as a subset of “medical services,”
made of record by the Examining Attorney;8
 Webpages offered to show that walk-in medical clinics offer rehabilitation
services and/or orthopedic surgery services under the same mark, made of
record by the Examining Attorney;9
 USPTO electronic records regarding third-party registrations offered to
show that medical services, rehabilitation services, and orthopedic surgery
services are offered under the same mark, made of record by the Examining
Attorney;10 and
 The declaration of Matthew Lemak (“Lemak Decl.”), Managing Member of
Applicant, and webpages of entities using marks containing the word
ORTHOEXPRESS or a phonetic equivalent, or similar wording, for
orthopedic urgent care walk-in clinics, made of record by Applicant.11

7 June 21, 2018 Office Action at TSDR 10-13.
8 Id. at TSDR 7-9.
9 February 19, 2019 Office Action at TSDR 8-38; October 7, 2019 Final Office Action at TSDR
2-56; May 5, 2020 Denial of Request for Reconsideration at TSDR 2-35.
10 October 7, 2019 Final Office Action at TSDR 57-81.
11 April 7, 2020 Request for Reconsideration at TSDR 10-37. We will cite the Lemak
Declaration by paragraph and exhibit number (e.g., “Lemak Decl. ¶ 9”).
Serial No. 87817950
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II. Analysis of Refusal
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of the likelihood of confusion under Section 2(d) is based
on an analysis of all probative facts in the record that are relevant to the likelihood
of confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973) (“DuPont”). We consider each DuPont factor for
which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
Two key DuPont factors in every Section 2(d) case are the first two factors
regarding the similarity or dissimilarity of the marks and the goods or services,
because 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.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24, 29 (CCPA 1976). Applicant discusses these two key factors, 10 TTABVUE 11-16,
22-26; 13 TTABVUE 7-11, as well as record evidence bearing on the sixth DuPont
factor, the “number and nature of similar marks in use on similar [services].” DuPont,
177 USPQ at 567. 10 TTABVUE 16-22; 13 TTABVUE 4-7. Applicant also notes Mr.
Lemak’s testimony regarding the absence of instances of actual confusion between
the involved marks, 10 TTABVUE 9, which implicates the eighth DuPont factor, the
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“length of time during and conditions under which there has been concurrent use
without evidence of actual confusion.” DuPont, 177 USPQ at 567.
We will confine our DuPont analysis to the mark in cited Registration No. 3339532
(the “’532 Registration”). If we find a likelihood of confusion as to that mark for any
of the services identified in the ’532 Registration, we need not reach the refusal based
on the second cited registration. In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1201-
02 (TTAB 2009) (Board determined likelihood of confusion with respect to only one of
the two cited registrations). Conversely, if we do not find a likelihood of confusion as
to that mark and any of the services in the ’532 Registration, we would not find it as
to the other cited mark, which contains additional literal elements and covers
different services. In re St. Julian Wine Co., 2020 USPQ2d 10595, *3 (TTAB 2020)
(citing In re Max Capital Grp., Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010)).
A. Similarity or Dissimilarity of the Services and Channels of
Trade
The second DuPont factor “considers ‘[t]he similarity or dissimilarity and nature
of the goods or services as described in an application or registration,” In re Detroit
Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir 2018) (quoting DuPont,
177 USPQ at 567), while the third DuPont factor considers “the similarity or
dissimilarity of established, likely-to-continue trade channels.’” Id. at 1052 (quoting
DuPont, 177 USPQ at 567). See also Stone Lion Capital Partners, LP v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-63 (Fed. Cir. 2014). We begin with these
DuPont factors.
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The services need not be identical, but “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)).
“Evidence of relatedness may include news articles or evidence from computer
databases showing that the relevant goods and services are used together or used by
the same purchasers; advertisements showing that the relevant goods and services
are advertised together or sold by the same manufacturer or dealer; or copies of use-
based registrations of the same mark for both the applicant’s services and the
[services] listed in the cited registration.” In re Country Oven, Inc., 2019 USPQ2d
443903, *4-5 (TTAB 2019).
Applicant correctly acknowledges that “[i]n an ex parte examination and appeal,
similarity of goods and services must be decided on the basis of the services recited
in the Application and the Cited Registrations.” 10 TTABVUE 22. The services
identified in the application as amended are “Medical services, namely, providing
non-surgical treatment of acute muscle, tendon, bone, joint and soft tissue injuries
requiring immediate care on an outpatient basis from a walk-in clinic,” while the
services identified in the ’532 Registration include “providing post-operative
rehabilitation services to patients and medical practitioners.”12

12 As noted above, the ’532 Registration covers other services. We consider them to be less
pertinent for purposes of our analysis.
Serial No. 87817950
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Applicant “does not dispute that Applicant’s Mark and the Cited Registrations all
are used to identify services in the health care field relating to orthopedic care.” 13
TTABVUE 9. Applicant argues instead that “the services offered by the Applicant,
orthopedic urgent care services, are narrowly defined, and different from those
provided by the owners of the Cited Registrations,” 10 TTABVUE 22, because
“Applicant’s services are at one end of the orthopedic care continuum, with the . . .
ORTHOXPRESS post-operative rehabilitation services at the far end.” Id. Applicant
claims that the “evidence supports the conclusion that consumers recognize that
continuum, and distinguish marks on that basis.” Id. at 22-23.
Applicant also argues that the Examining Attorney “must show ‘something more’
than that similar marks are used for related services,” id. at 23, and that “the
evidence of record does not meet that standard,” because there is no evidence that
“Applicant specializes in the orthopedic surgery services or the post-operative
rehabilitation services offered under the Cited Registrations,” because “Applicant’s
description of services expressly does not encompass those services,” and because “the
services in the Cited Registrations expressly do not encompass Applicant’s services.”
Id.
Applicant cites the Lemak Declaration in support of Applicant’s arguments that
the services are dissimilar. Mr. Lemak testified that Applicant fills “a gap in the field
for treatment of orthopedic injuries,” Lemak Decl. ¶ 5, specifically “providing non-
surgical treatment of acute muscle, tendon, bone, joint and soft tissue injuries
requiring immediate care on an outpatient basis from a walk-in clinic” rather than
Serial No. 87817950
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immediate surgery. Lemak Decl. ¶ 5. He further testified that with the exception of
general acute care or orthopedic hospitals, “most facilities dedicated to providing
orthopedic care do not provide urgent care from a walk-in clinic.” Lemak Decl. ¶ 5.
With respect to the services identified in the ’532 Registration, Mr. Lemak
testified that “post-operative rehabilitation services typically are provided by a
rehabilitation hospital or orthopedic specialty clinic, not by a facility that operates an
urgent care walk-in clinic,” Lemak Decl. ¶ 6, that urgent care clinics are typically
staffed largely by non-physicians “operating under the supervision of a Medical
Doctor,” and that the “services provided by an urgent care walk-in clinic are not suited
for follow-up treatment and tracking of the patient at the surgical and post-surgical
stages, and typically, the urgent care walk-in clinic does not track those stages.”
Lemak Decl. ¶ 6. He criticizes the Examining Attorney’s evidence “that may tend to
show that ‘medical services,’ ‘rehabilitation services’ and ‘Orthopaedic surgery,’ are
of a kind that may emanate from a single source under a single mark,” Lemak Decl.
¶ 7, because “while those services ‘may’ emanate from a single source under a single
mark, that is the exception rather than the rule.” Lemak Decl. ¶ 7.
Applicant argues that the majority of the third-party uses submitted by the
Examining Attorney “are for hospitals or hospital systems that provide general acute
care hospital services; that is, the wide cluster of medical and surgical services offered
by a hospital,” 10 TTABVUE 25, and that “the registrations cited by the Examining
Attorney all show use of those marks for the wide range of medical and surgical
inpatient hospital services.” Id. Applicant further argues that the “fact that large
Serial No. 87817950
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orthopedic specialty clinics and general acute care hospitals provide the full range of
urgent care, surgery, and rehabilitation services under the same mark is not a
surprise,” but that “the Examining Attorney failed to take into account that general
acute care hospitals (which provide the full range of medical and surgical services)
are the exception and not the rule for providers of specific orthopedic urgent care
services,” and that “[m]ore typically, even if urgent care clinics and orthopedic
surgical or rehabilitation centers have common ownership, the urgent care walk-in
clinic often is separately branded.” Id.
With respect to the third DuPont factor, Applicant acknowledges that “the services
offered by Applicant and the owners of the Cited Registration [sic] are related,” but
argues that “the market uses the ORTHOEXPRESS designation to separately brand
the walk-in urgent care center” and that for “this reason the third factor in the
DuPont analysis (channels of trade) weighs more strongly in favor of Applicant.
Applicant offers its services to the same general market, medical services, but the
channels of distribution are markedly distinct.” Id. at 26.
The Examining Attorney responds that she “submitted internet evidence showing
that the same entity commonly provides walk in clinic medical services and
rehabilitation services and markets the services under the same mark.” 12
TTABVUE 12. She also cites “evidence from the USPTO’s X-Search database
consisting of a number of third-party marks registered for use in connection with the
same or similar services as those of both applicant and registrant in this case,” which
she claims “shows that the services listed therein, namely ‘medical services’,
Serial No. 87817950
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‘rehabilitation services’ and ‘Orthopaedic surgery’, are of a kind that may emanate
from a single source under a single mark.” Id. at 13. She lists eight such registrations.
Id. at 13-14. She argues that these third-party uses and registration trump the
Lemak Declaration. Id. at 17-18.
In its reply brief, Applicant argues that a substantial number of the Examining
Attorney’s third-party uses “are not limited to orthopedic services, but are hospitals
or systems that provided general acute care hospital services; that is, the wide cluster
of medical and surgical services offered by a hospital.” 13 TTABVUE 10. Applicant
concludes that “[b]ecause of the way the market for orthopedic urgent care services
has developed . . . consumers are conditioned to distinguish between providers of
orthopedic urgent care services, orthopedic surgery services, and orthopedic
rehabilitation services,” and “the second and third factors in the DuPont analysis
(similarity of services and channels of trade) weigh in favor of Applicant.” Id. at 10-
11.
At the outset of our analysis, we must address Applicant’s argument under the
second DuPont factor that “[t]o establish likelihood of confusion the Examiner must
show ‘something more’ than that similar marks are used for related services.” 10
TTABVUE 23. As reflected in the authorities cited by Applicant in support of this
argument, id., the “something more” requirement originated in cases involving the
relatedness of restaurant services to foods or beverages and has been applied
primarily in such cases.13 See, e.g., Tao Licensing, LLC v. Bender Consulting Ltd., 125

13 Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993) (beef,
pork, and barbecue sauce and restaurant services); Jacobs v. Int’l Multifoods Corp., 668 F.2d
Serial No. 87817950
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USPQ2d 1043, 1060-62 (TTAB 2017) (holding that “when comparing restaurant
services to alcoholic beverages, we must also follow our reviewing court’s holding that
‘the fact that restaurants serve food and beverages is not enough to render food and
beverages related to restaurant services for purposes of determining the likelihood of
confusion,” and that “‘to establish likelihood of confusion a party must show
something more than that similar or even identical marks are used for food products
and for restaurant services.’”) (quoting In re Coors Brewing Co., 343 F.3d 1340, 68
USPQ2d 1059, 1063 (Fed. Cir. 2003)). The Federal Circuit has also held that the
“something more” requirement “has application whenever the relatedness of the
goods and services is not evident, well-known or generally recognized.” In re St.
Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1087 (Fed. Cir. 2014) (finding that
the record did not show that “health care services, namely, evaluating weight and
lifestyle health and implementing weight and lifestyle health improvement plans in
a hospital-based residential program” were related to “printed manuals, posters,
stickers, activity cards and educational worksheets dealing with physical activity and
physical fitness”).
There are no circumstances in this case that require the Examining Attorney to
“show ‘something more’ than that similar marks are used for related services,” as
Applicant claims, 10 TTABVUE 23, under the Federal Circuit’s decision in St. Helena

1234, 212 USPQ 641 (CCPA 1982) (tea and restaurant services); In re Opus One Inc., 60
USPQ2d 1812 (TTAB 2001) (wine and restaurant services); In re Golden Griddle Pancake
House Ltd., 17 USPQ2d 1074 (TTAB 1990) (syrup and restaurant services); In re Mucky Duck
Mustard Co., 6 USPQ2d 1467 (TTAB 1988) (mustard and restaurant services).
Serial No. 87817950
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Hosp. This case does not involve the relatedness of goods to services, and because
Applicant concedes that “the services offered by Applicant and the owners of the Cited
Registration are related,” 10 TTABVUE 26 and that the involved marks “are used to
identify services in the health care field relating to orthopedic care,” 13 TTABVUE 9,
the manner in which the identified services may be related is not “obscure, unknown,
or generally unrecognized. . . .” Country Oven, 2019 USPQ2d 443903 at *13 (finding
that “something more” requirement was inapplicable to issue of relatedness of retail
bakery services and bread buns). Accordingly, the Examining Attorney need only
show that the services are “related in some manner” or that “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 USPQ2d at 1722.
To make that showing, the Examining Attorney made of record multiple webpages
showing that orthopedic walk-in clinic services and post-operative orthopedic
rehabilitation services are frequently offered under by the same entity under the
same mark. We summarize those pages below:
 The Crystal Clinic Orthopaedic Center offers “Crystal Clinic QuickCare,”
which gives “people with minor bone, muscle and joint injuries immediate
Serial No. 87817950
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access to orthopedic care,”14 as well as orthopedic rehabilitation services,
including post-surgical physical therapy;15
 Cox Health operates an “Orthopedic & Sports Injury Walk-in Clinic,”16 and
also provides orthopedic rehabilitation services, including for patients
recovering from joint replacements;17
 Froedtert & Medical College of Wisconsin operates a “Walk-In Care for
Sprains and Fractures” that offers “orthopaedic walk-in care that saves you
time and money,”18 and also provides rehabilitation services “to help

14 February 19, 2019 Office Action at TSDR 14. This clinic, and many of the ones whose
webpages were made of record by Applicant, operate under both a house mark and a clinic-
specific mark. See Amica Mutual Ins. Co. v. R. H. Converse Corp., 204 USPQ 155, 161 (TTAB
1979) (“[A] house mark serves as an umbrella for all of the product marks and merchandise
emanating from a single source.”). Mr. Lemak’s testimony that “if urgent care clinics and
orthopedic surgical or rehabilitation centers have common ownership, the urgent care walk-
in clinic is separately branded,” Lemak Decl. ¶ 7, thus appears to be accurate only as far as
it goes, because it does not acknowledge the use of house marks as well. Applicant’s evidence
shows that the several third-party “Ortho Express” clinics operate under the aegis of entities
identified by their house marks. April 7, 2020 Request for Reconsideration at TSDR 15-16
(Coastal Ortho Express), 17 (Alpha Orthopedics & Sport Medicine Ortho Express), 19
(M.O.S.T. (Metro Orthopedics and Sports Therapy) Ortho Express), 20 (Prairie Orthopaedic
Ortho Express Care), 21 (Total Ortho Express), 22 (Monument Health Ortho Express), 24
(Precision Ortho Express), 25 (Ortho RI Express), 26 (Center for Orthopaedics
OrthoExpress), 27 (Parkview Health Ortho Express), 28 (New England Orthopedic
Specialists Ortho Express), 29 (Reconstructive Orthopedics Ortho Express), 30 (Orthopedic
Associates of Dutchess County Orthoexpress), 31 (Winchester Orthopaedic Associates Ortho
Express), 32 (Cleveland Clinic Ortho Express Care), 34 (Excelsior Orthopaedics Express), 35
(ExpressOrtho at Chatham Orthopaedic Associates), 36 (OrthoCare Express, a service of
Ortho Connecticut), and 37 (Orthopaedic Express by MOS (Muir Orthopaedic Specialists)).
Such use of more than one mark in connection with the same services supports the
relatedness of the respective services because they are offered under the umbrella of a house
mark, which identifies a common source even though the clinics also bear separate clinic-
specific marks.
15 Id. at TSDR 16-17.
16 Id. at TSDR 7-9.
17 October 7, 2019 Final Office Action at TSDR 3.
18 Id. at TSDR 16-17.
Serial No. 87817950
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patients recover from all types of orthopaedic injuries, conditions, and
surgeries;”19
 Rochester Regional Health operates a “Walk-in Care Center” that treats
sprains, strains, and broken bones,20 and also provides an array of
orthopedic rehabilitation services “[w]hether you’re recovering from
surgery, a sports injury or a spinal condition,” including “specialized post-
operative rehabilitation for patients of all ages who are recovering from
surgery related to sports-related injuries;”21
 Summit Orthopedics operates an “OrthoQUICK Walk-in Clinic” for bone
and joint injuries,22 and also provides “[i]nnovative post-surgical care” as
part of the “post-surgical rehabilitation process;”23
 Front Range Orthopedics & Spine operates a “Walk-In Orthopedic Clinic”
that provides patients “with an alternative to the emergency room or
general urgent care facilities,”24 and also provides “physical therapy and
rehabilitation to assist our patients in regaining full strength and mobility
so they can get back to enjoying life,” including those who “[r]ecently had

19 Id. at TSDR 14.
20 Id. at TSDR 34-35.
21 Id. at TSDR 31-33.
22 Id. at TSDR 43-46.
23 Id. at TSDR 40-41.
24 Id. at TSDR 55.
Serial No. 87817950
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orthopedic surgery, such as hip surgery, knee surgery, shoulder surgery or
total joint replacement;”25
 Rothman Orthopedics operates “two walk-in orthopedic-only urgent care
clinics,”26 and also provides orthopedic rehabilitation services;27
 Ortho Georgia operates an “Orthopaedic Urgent Care Center” “for WALK-
IN orthopaedic patients that require an immediate orthopaedic
evaluation,”28 and also provides rehabilitation services that “work closely
with physicians and surgeons to create individual programs to safely and
quickly allow our patients to achieve their highest functioning levels;”29 and
 OSS Health offers “Orthopaedic Urgent Care” where “Walk-ins are always
welcome!,”30 as well as “Orthopaedic Rehabilitation” to “reach your
maximum recovery following an orthopaedic injury or surgery.”31
As noted above, many of Applicant’s third-party uses of “Ortho Express” for
orthopedic walk-in or urgent care clinics similarly appear to involve the use of a house
mark for those services as well as for other orthopedic services. Examples include:
 Coastal Orthopaedics, PC, a group of orthopedic medicine physicians “with
unique specialties in spine, pediatrics, foot and ankle, sports medicine,

25 Id. at TSDR 52-53.
26 May 5, 2020 Denial of Request for Reconsideration at TSDR 2.
27 Id. at TSDR 5-20.
28 Id. at TSDR 21-25.
29 Id. at TSDR 26.
30 Id. at TSDR 31-32.
31 Id. at TSDR 33.
Serial No. 87817950
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shoulder, hand and upper extremity, and total joint replacement surgery,”
which announced the opening of “Coastal Ortho Express,” which “will offer
walk-in urgent care for orthopaedic issues;”32
 Alpha Orthopedics & Sports Medicine, which operates an “Ortho Express”
walk-in injury clinic at one of its existing locations that is designed “for a
full array of services matching those of our full-time clinic;”33
 Metro Orthopedics and Sports Therapy (MOST), which offers orthopedics
and sports therapy services as well as physical therapy and orthopedic
surgery services, and which announced that an “Ortho Express” webpage
would be “Coming Soon;”34
 An “OrthoExpress” urgent-care clinic that “is a division of Cedar Valley
Medical Specialists;”35
 Ortho Rhode Island, which operates an “Ortho RI Express” at one of its
office locations, and whose website contains links to “Orthopedic
Specialties” and “Therapies Provided;”36
 Parkview Health, which operates a “Parkview Ortho Express” walk-in
clinic as well as an orthopedic hospital;37

32 April 7, 2020 Request for Reconsideration at TSDR 16.
33 Id. at TSDR 17.
34 Id. at TSDR 19.
35 Id. at TSDR 23.
36 Id. at TSDR 25.
37 Id. at TSDR 27.
Serial No. 87817950
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 An “OrthoExpress” clinic that is a “Division of Reconstructive Orthopedics,”
which also offers physical therapy and occupational therapy services;38
 An “Ortho Express” clinic, which operated by Winchester Orthopaedic
Associates, which also offers physical therapy services;39 and
 An “Ortho Express Care” clinic operated by the well-known Cleveland
Clinic.40
These uses suggest that urgent care orthopedic clinics of the sort operated by
Applicant are frequently extensions of the array of services, including rehabilitation
services, offered by orthopedic medicine practices of various sorts.
The Examining Attorney also made of record eight third-party, use-based
registrations of marks for both “medical services” or “urgent medical care services,”
on the one hand, and “physical rehabilitation” services, on the other hand. 12
TTABVUE 13-14.41 In determining the scope of an applicant’s or registrant’s
identification of services, “[w]here the identification of services is broad, the Board
‘presume[s] that the services encompass all services of the type identified.’” Country
Oven, 2019 USPQ2d 443903 at *4 (quoting Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115
USPQ2d 1007, 1025 (TTAB 2015)). The same principle applies in determining the
scope of a third-party registrant’s identification of services. “Just as we must consider
the full scope of the . . . services as set forth in the application and registration under

38 Id. at TSDR 29.
39 Id. at TSDR 31.
40 Id. at TSDR 32.
41 October 7, 2019 Final Office Action at TSDR 57-81.
Serial No. 87817950
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consideration, we must consider the full scope of the . . . services described in a third-
party registration.” Id. at *9. “Because the benefits of registration are commensurate
with the scope of the [services] specified in the certificate of registration, a [third-
party] registration that describes [services] broadly is presumed to encompass all . . .
services of the type described.” Id.
Accordingly, we must construe the broadly-described “medical services” in the
third-party registrations to encompass Applicant’s narrower services of “providing
non-surgical treatment of acute muscle, tendon, bone, joint and soft tissue injuries
requiring immediate care on an outpatient basis from a walk-in clinic.” Applicant
itself did so when it amended its original identification of services, “medical services”
alone,42 to “Medical services, namely, providing non-surgical treatment of acute
muscle, tendon, bone, joint and soft tissue injuries requiring immediate care on an
outpatient basis from a walk-in clinic” through an amendment that expressly
describes those narrower services as a subset of the broader “medical services.”
Moreover, in view of the use evidence summarized above, which shows that
physical therapy and other rehabilitation services are often provided to patients
recovering from surgery, we must similarly construe the broadly-identified “physical
rehabilitation” services in the third-party registrations to encompass the narrower
“post-operative rehabilitation services” identified in the ’532 Registration.

42 March 2, 2018 Application at TSDR 1.
Serial No. 87817950
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Construing the identifications of services in the third-party registrations in these
manners, the registrations bolster the Examining Attorney’s third-party uses as
evidence that the services are related. Id. at *10.
Considered against the backdrop of the amendment of Applicant’s identification
of its original “medical services” to “providing non-surgical treatment of acute muscle,
tendon, bone, joint and soft tissue injuries requiring immediate care on an outpatient
basis from a walk-in clinic,” Applicant’s third-party use evidence, and Applicant’s
concession that “the services offered by Applicant and the owners of the Cited
Registration [sic] are related,” 10 TTABVUE 26, the “evidence of record suffices to
show that Applicant’s services and Registrant’s [services] are clearly related.”
Country Oven, 2019 USPQ2d 443903 at *13. The second DuPont factor supports a
finding of a likelihood of confusion.
As noted above, with respect to channels of trade, Applicant concedes that it
“offers its services to the same general market, medical services,” 10 TTABVUE 26,
but argues that “the market uses the ORTHOEXPRESS designation to separately
brand the walk-in urgent care center,” and that “[f]or this reason the third factor in
the DuPont analysis (channels of trade) weighs more strongly in favor of Applicant”
because “the channels of distribution are markedly distinct.” Id. We disagree. As
discussed above, Applicant’s third-party use evidence shows that urgent care walk-in
clinics also commonly operate under the house mark of a larger institution, such as a
hospital, orthopedic clinic, or other orthopedic medicine practice. Accordingly, while
the respective services per se may be offered through different outlets of a health care
Serial No. 87817950
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provider, the channels of trade for the services overlap under the umbrella of the
provider, and, in any event, the services may be provided to the same classes of
consumers, patients who have suffered from, or who are recuperating from surgery
for, orthopedic injuries. We find that the third DuPont factor supports a finding of a
likelihood of confusion.
B. The Number and Nature of Similar Marks in Use on Similar
Services
The sixth DuPont factor “considers ‘[t]he number and nature of similar marks in
use on similar goods’” or services. Omaha Steaks Int’l, Inc. v. Greater Omaha Packing
Co., 908 F.3d 1315, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting DuPont, 177
USPQ at 567). This factor potentially impacts our analysis of the similarity or
dissimilarity of the marks under the first DuPont factor because the “purpose of
introducing evidence of third-party use is ‘to show that customers have become so
conditioned by a plethora of such similar marks that customers have been educated
to distinguish between different [such] marks on the bases of minute distinctions.’”
Id. (quoting Palm Bay Imps. v. Veuve Cliquot Ponsardin Maison Fondee en 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1694 (internal quotation and quotation marks omitted)).
Applicant argues that the “unrefuted real-world evidence of other uses of marks
prominently featuring the word ORTHOEXPRESS demonstrates that consumers are
not likely to rely upon that word alone for source identification and must look to other
elements of the mark.” 10 TTABVUE 16.
Applicant argues that it “submitted for the record unrefuted evidence of fifteen
uses of using the word ORTHOEXPRESS either alone or with other words (such as
Serial No. 87817950
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ORTHOEXPRESS CARE or PARKVIEW ORTHOEXPRESS), as well as another six
uses that use a similar formulation (including, for example, ORTHO RI EXPRESS
and ORTHOCARE EXPRESS).” Id. at 18. According to Applicant, “[t]hat evidence
shows use of the marks with orthopedic urgent care walk-in clinic services,” id.,
essentially the services for which Applicant seeks registration. We depict below
Applicant’s chart summarizing the third-party uses:
43
The Examining Attorney rejects Applicant’s arguments based on this evidence
“because Trademark Act Section 7(b), 15 U.S.C. §1057(b), provides that a certificate

43 Lemak Decl. ¶ 8.
Serial No. 87817950
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of registration on the Principal Register is prima facie evidence of the validity of the
registration, of the registrant’s ownership of the mark, and of the registrant’s
exclusive right to use the mark in commerce on or in connection with the services
specified in the certificate,” 12 TTABVUE 17, and “the principal register does not
show that this wording is weak and applicant has not provided any registrations
illustrating that this wording is weak in relation to the relevant services. Thus,
applicant’s argument is not being considered because to do so would fail to give the
cited registered mark the validity to which it is entitled.” Id. at 17-18 (citing In re Fat
Boys Water Sports LLC, 118 USPQ2d 1511, 1517 (TTAB 2016) (internal citation
omitted)).
In its reply brief, Applicant argues that the “extensive third-party use of the term
‘ORTHOEXPRESS’ to identify orthopedic health care services (specifically orthopedic
urgent care walk-in clinic services) is dispositive.” 13 TTABVUE 4 (citing In re
Broadway Chicken Inc., 38 USPQ2d 1559 (TTAB 1996) and Juice Generation, Inc. v.
GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671 (Fed. Cir. 2015)). Applicant argues
that “the Examining Attorney just ignores the evidence, and erects a straw man
argument the Applicant has never made,” id. at 5-6, and that the “Examining
Attorney cannot ignore evidence that controlling precedent requires her to consider.”
Id. at 6. Applicant claims that its “evidence of third-party registrations shows that
extensive use of the word ORTHOEXPRESS for identical or related services
conditions consumers to look to other aspects of the mark because the word
ORTHOEXPRESS is suggestive of the services and relatively weak by itself.” Id.
Serial No. 87817950
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Applicant concludes that the “weakness of the word ‘ORTHOEXPRESS’ strongly
weights the sixth DuPont factor in Applicant’s favor, and actually is dispositive in
this case.” Id. at 7.
We agree with Applicant that the Examining Attorney erred in not considering
the probative value of Applicant’s third-party use evidence and in effectively
dismissing it out of hand.44 Applicant’s evidence is sufficient in quantity and quality
to show the conceptual and commercial weakness of the words “ortho” (an
abbreviation of “orthopedic”) and “express” (suggesting rapid or expedited treatment)
when they are combined in marks for orthopedic walk-in clinic services, and the third-
party uses indicate that Applicant has entered a crowded field of ORTHO EXPRESS-
formative marks for urgent care services.45

44 Contrary to the Examining Attorney’s claim, Applicant does not challenge the validity of
the cited marks, but instead argues that they are weak as source identifiers due to the
multiple third-party uses of similar marks. Such an argument is not a collateral attack on
the validity of the cited registrations because an incontestably-registered and valid mark,
such as the one in the ’532 Registration, may nevertheless be found to be a weak one. See Fat
Boys, 118 USPQ2d at 1517-18. See also TRADEMARK MANUAL OF EXAMINING PROCEDURE
(“TMEP”) § 1207.01(d)(iii) (Oct. 2018) (“Evidence of third-party use falls under the sixth du
Pont factor – the ‘number and nature of similar marks in use on similar goods.’”).
45 As noted above, many of the third-party marks offered by Applicant include house marks
that also serve to identify source and to that extent, their probative value on the weakness of
the term “ortho express” per se is reduced somewhat. Nevertheless, the third-party uses in
the record here are within the numerical range of such uses found to be significant to show
weakness in the Federal Circuit’s decisions in Juice Generation and Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. v. Millennium Sports, S.L.U., 797 F.3d 1363, 116
USPQ2d 1129 (Fed. Cir. 2015). In Juice Generation, there were approximately 26 third-party
uses and registrations of marks containing the words “Peace” and “Love” for restaurant
services and food products that showed the weakness of the opposer's “Peace & Love” marks
for restaurant services, 115 USPQ2d at 1673 & n.1, while in Jack Wolfskin, there were at
least 14 third-party uses and registrations of paw print marks for clothing that showed the
weakness of the opposer's paw print marks for the same goods. 116 USPQ2d at 1136 & n.2.
Serial No. 87817950
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The third-party uses are less potent, however, in showing the conceptual or
commercial weakness of the word “express” in the mark in the ’532 Registration. As
Applicant puts it, unlike urgent care services, which by their nature are sought on a
rapid or expedited basis without prior planning, the services identified in the ’532
Registration are “carefully considered ‘post-operative rehabilitation services’
following a surgery.” 10 TTABVUE 14. Such services are not sought on an exigent
basis in response to an unanticipated orthopedic problem, and the descriptive nature
of the word “express” (or “xpress”) is less apparent in that context. Nevertheless, we
find that the third-party use evidence provides some evidence of the conceptual
weakness of the ORTHOXPRESS literal portion of the mark in the ’532 Registration.
The sixth DuPont factor slightly supports a finding of no likelihood of confusion.
C. Similarity or Dissimilarity of the Marks
Under the first DuPont factor, we consider “the similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial
impression.” Palm Bay Imps., 73 USPQ2d at 1691. “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) (quoting In re Davia, 110 USPQ2d
1810, 1812 (TTAB 2014)), aff’d mem., 777 F. App’x 516 (Fed. Cir. 2019).
The proper test regarding similarity “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.” Cai v. Diamond Hong, Inc., 901 F.3d
Serial No. 87817950
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1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., 101 USPQ2d
at 1721 (internal quotation marks and citation omitted)). “The proper perspective on
which the analysis must focus is on the recollection of the average customer, who
retains a general rather than specific impression of marks.” In re i.am.symbolic, llc,
127 USPQ2d 1627, 1630 (TTAB 2018) (citations omitted).
Applicant argues that “[d]espite all three marks having the phonetically
equivalent ‘OrthoExpress’ (with the Cited Registrations not having the middle ‘E’),
the differences in the designs are sufficient to avoid likelihood of confusion” because
“[w]ithout question, the design elements of the marks are substantially different.” 10
TTABVUE 13. Applicant argues that there are minute differences in detail between
the designs. Id. at 13-14.
Applicant further argues that in “addition to the designs of Applicant’s Mark and
the Cited Registrations not being visually similar in appearance, the marks are
different in appearance and sound because of their different wording.” Id. at 14.
Applicant acknowledges that while “all three marks contain ‘ORTHOEXPRESS’ or
its phonetic equivalent, Applicant’s Mark contains the wording ‘URGENT CARE’,”
and that “the addition of those words transforms the Applicant’s Mark into a three
word, seven syllable phrase. The ORTHOXPRESS registration has only one word,
containing four syllables.” Id. Applicant also argues that the disclaimed words
URGENT CARE in its mark connote “that Applicant provides only urgent care
services.” Id. at 15.
Serial No. 87817950
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The Examining Attorney responds that “the marks are highly similar in sound,
appearance, connotation, and commercial impression” because they are all spelled
similarly, sound similar and create a similar overall commercial impression.” 12
TTABVUE 8. She argues that the involved marks are all dominated by their verbal
elements, which she contends are virtually identical, id. at 9-10, and that “[g]iven
that all three marks share nearly identical wording in ‘ORTHOEXPRESS’,
‘ORTHOEXPRESS and ‘ORTHO XPRESS’, it is highly likely that the consumers are
going to remember that portion of the mark over the designs.” Id. at 10.
We reproduce the involved marks again below for ease of reference in following
our analysis:

The marks must be considered in their entireties, 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 consideration of the marks in
their entireties.” Detroit Athletic Co., 128 USPQ2d at 1050 (quoting In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)). In the case of composite
Serial No. 87817950
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word-and-design marks such as those here, “the words are normally accorded greater
weight because they are likely to make a greater impression upon purchasers, to be
remembered by them, and to be used by them to request the [services].” In re
Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra,
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). “The verbal portion of
a word and design mark ‘likely will appear alone when used in text and will be spoken
when requested by consumers.’” Id. (quoting Viterra, 101 USPQ2d at 1911).
This general principle applies with full force here. The words “OrthoExpress” and
“OrthoXpress” are visually prominent, separate and apart from the designs in the
respective marks, and will be used to refer to the service providers and their services
when the marks are verbalized. By contrast, “[a] design is viewed, not spoken,” In re
Electrolyte Labs., Inc., 913 F.2d 930, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990), and the
respective designs, which Applicant describes as “a stylized cross” in its mark, 10
TTABVUE 13, and as “a series of wavy bands or lines that invoke the image of a
figure in motion” in the mark in the ’532 Registration, id., will not be spoken when
consumers request, refer to, or recommend the respective services. We find that the
dominant portion of Applicant’s mark is the words “OrthoExpress,”46 while the
dominant portion of the cited mark is the phonetically identical words “OrthoXpress.”

46 The words “OrthoExpress” are the sole source-identifying part of the literal elements in
Applicant’s mark. Applicant has disclaimed the exclusive right to use the generic term
“Urgent Care,” which according to Applicant “identifies a specific type of medical service:
medical care provided for illnesses or injuries which require prompt attention but are
typically not of such seriousness as to require the services of an emergency room.” 10
TTABVUE 15.
Serial No. 87817950
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We turn now to the required comparison of Applicant’s mark in its entirety to the
mark in the ’532 Registration in its entirety, giving greater weight in that comparison
to the words “OrthoExpress” in Applicant’s mark and “OrthoXpress” in the cited mark
than to the other elements of the marks.
With respect to appearance, there are differences that are readily perceptible
when the marks are viewed together, as Applicant presents them in its appeal brief:

10 TTABVUE 13. But the marks “must be considered . . . in light of the fallibility of
human memory’ and ‘not on the basis of side-by-side comparison.’” St. Helena Hosp.,
113 USPQ2d at 1085 (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977)). Accordingly, we must compare the
marks from the standpoint of a consumer with a “general rather than specific
impression” of the mark in the ’532 Registration, i.am.symbolic, 127 USPQ2d at 1630,
who separately encounters Applicant’s mark. Such an individual “relies on the
recollection of the various marks that he or she has previously seen in the
marketplace,” In re Info. Builders, Inc., 2020 USPQ2d 10444, *6 (TTAB 2020), and
“more frequently than not, such recollection is not enhanced with minute details or
Serial No. 87817950
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specific characteristics of the marks, but is determined by an overall or general
impression of the many and various marks that exist in the marketplace.” Id. at *6-
7.
In this case, we must also take into account that when a consumer first encounters
Applicant’s mark, it will probably be because he or she has sustained an unexpected
and likely painful orthopedic injury that requires the prompt care that is available at
one of Applicant’s urgent care clinics. Under those circumstances, injured consumers
focused on obtaining prompt treatment for their injuries are particularly unlikely to
recall the minute design details of the mark in the ’532 Registration, such as “the
prescription symbol, ‘Rx’,” 10 TTABVUE 13, and what Applicant describes as “the
image of a patient that has recovered and is ‘springing into action’ after using the
registrant’s post-operative rehabilitation services.” Id. at 15.
A consumer with a general rather than specific impression of the mark in the ’532
Registration, which is dominated by the words “OrthoXpress,” who later separately
encounters Applicant’s composite mark, which is dominated by the phonetically
identical words “OrthoExpress,” is not likely to distinguish the marks’ appearances
because of the design differences that would be apparent in a contrived side-by-side
comparison. We find that the marks are more similar than dissimilar in appearance
when they are considered in their entireties.
The marks are identical in sound when they are verbalized as “OrthoExpress” and
“OrthoXpress.” Applicant argues that they would differ aurally if its mark were
verbalized as “OrthoExpress Urgent Care,” id. at 14, but we find that it is likely that
Serial No. 87817950
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many consumers would dispense with use of the generic term for Applicant’s services
when verbalizing Applicant’s mark, particularly given “the penchant of consumers to
shorten marks.” In re Bay State Brewing Co., 117 USPQ2d 1958, 1961 (TTAB 2016)
(finding that it “is reasonable that such a practice would lead many consumers to
drop the highly descriptive/generic term ‘Blonde’ when calling for Applicant’s” beer
sold under the TIME TRAVELER BLONDE mark) (citing In re Abcor Dev. Corp., 588
F.2d 811, 200 USPQ 215, 219 (CCPA 1978) (Rich, J. concurring: “the users of
language have a universal habit of shortening full names – from haste or laziness or
just economy of words.”)). We find that the marks are identical in sound when they
are verbalized in their most likely manner, and more similar than dissimilar in sound
when the generic term “urgent care” in Applicant’s mark is also verbalized.
With respect to connotation and commercial impression, we are unpersuaded by
Applicant’s argument that the presence of the generic term “urgent care” in
Applicant’s mark distinguishes it in meaning from the mark in the ’532 Registration
because the registrant “does not offer ‘urgent care’ services, but carefully considered
‘post-operative rehabilitation services’ following a surgery,” 10 TTABVUE 14, while
“Applicant provides only urgent care services.” Id. at 15. The ultimate issue, of course,
“is not whether consumers would confuse the services themselves, but rather whether
they would be confused as to the source of the services” due to similarities in the
marks. Bond v. Taylor, 119 USPQ2d 1049, 1053 (TTAB 2016) (quoting Miss Universe
L.P. v. Cmty. Mktg. Inc., 82 USPQ2d 1562, 1568 (TTAB 2007)). The fact that
Applicant’s mark includes the generic term for the specific services offered by
Serial No. 87817950
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Applicant does not mean that the dominant portion of Applicant’s mark,
“OrthoExpress,” has a different meaning from “OrthoXpress,” the dominant portion
of the mark in the ’532 Registration. Particularly against the backdrop of the record
evidence showing that a number of orthopedic medicine practices have extended their
services offerings into urgent care clinics, the presence of “Urgent Care” in Applicant’s
mark could easily give the impression that the owner of the mark in the ’532
Registration has extended its offerings into urgent care services. We find that the
marks are similar in meaning when considered in their entireties because the
dominant portions “OrthoExpress” and “OrthoXpress” have similar meanings.
Because the marks are similar in appearance, sound, and meaning, the first
DuPont factor supports a finding of a likelihood of confusion.
D. The Absence of Evidence of Actual Confusion
The eighth DuPont factor considers “the length of time during and conditions
under which there has been concurrent use without evidence of actual confusion.” In
re Guild Mortg. Co., 2020 USPQ2d 10279, *6 (TTAB 2020) (quoting DuPont, 177
USPQ at 567). As noted above, Applicant does not expressly invoke this factor, but
refers in its appeal brief to Mr. Lemak’s testimony regarding the absence of any
instances of actual confusion during the period between April 2018, when Applicant
first used its mark, Lemak Decl. ¶ 2, and the present. 10 TTABVUE 9.
In Guild Mortg., the Board held that unlike other DuPont factors, the eighth factor
“requires us to look at actual market conditions, to the extent there is evidence of
such conditions of record.” Guild Mortg. Co., 2020 USPQ2d 10279 at *6 (emphasis in
Serial No. 87817950
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original). Mr. Lemak provides very limited evidence of such actual market conditions.
He testified that as the Managing Member of Applicant, he “would be aware if there
were any instances of actual confusion between our use of Applicant’s
ORTHOEXPRESS URGENT CARE (and design) Mark to identify our services and
the services offered by [the] registrants under their respective marks,” Lemak Decl.
¶ 9; that he suspects that any such actual confusion “would present itself in
misaddressed or misdirected invoices, bills, or other statements; misaddressed or
misdirected deliveries of goods and supplies; patients mistaking one provider for the
other; doctors and other medical professionals mistaking one provider for the other;
misdirected referrals; and misdirected reimbursements from commercial and other
insurers,” Lemak Decl. ¶ 9; and that he is “not aware of any instances of actual
confusion between our use of Applicant’s ORTHOEXPRESS URGENT CARE (and
design) Mark to identify our services and the services offered by those registrants
under their respective marks.” Lemak Decl. ¶ 9.
The “absence of any reported instances of actual confusion would be meaningful
only if the record indicated appreciable and continuous use by [A]pplicant of its mark
for a significant period of time in the same markets as those served by [registrant]
under [its] mark[ ].” Gillette Can. Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB
1992). Mr. Lemak’s declaration is silent as to the extent and geographic scope of
Applicant’s rendition of services under its mark since April 2018, and thus there is
“no evidence that the [involved services] have been sold together in the same locality
for a significant period of time so that, if confusion were likely to occur, circumstances
Serial No. 87817950
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have been such that it could be expected to have happened.” Id. Compare Guild
Mortg., 2020 USPQ2d 10279 at *6-8 (finding declaration testimony regarding scope
of applicant’s use of its mark in connection with mortgage banking services over a 40-
year period without reported instances of actual confusion insufficient to show that
confusion was unlikely), with In re Gen. Motors Corp., 23 USPQ2d 1465, 1471 (TTAB
1992) (evidence on eighth DuPont factor found to be persuasive that confusion was
unlikely where “during a nearly thirty-year interval of sustained success in the
marketing of what, for the average consumer, is typically a major and expensive
purchase,” the applicant “experienced no reported instances of actual confusion
between its use of ‘GRAND PRIX’ in connection with almost 2.7 million automobiles
and registrant’s use of its ‘GRAND PRIX’ marks for related automotive replacement
parts.”). We find that the eighth DuPont factor is neutral in our analysis of the
likelihood of confusion.
E. Balancing the DuPont Factors
The dominant portion of the marks, the words “OrthoExpress” and “OrthoXpress,”
are conceptually and commercially weak, and the mark in the ’532 Registration is
thus entitled to a narrower scope of protection than a stronger mark. But “even weak
marks are entitled to a presumption of validity under Section 7(b) of the Trademark
Act, 15 U.S.C. § 1057(b), and to protection against registration of a mark likely to
cause confusion.” Guild Mortg., 2020 USPQ2d 10279 at *3. The services are closely
related, the channels of trade and classes of consumers overlap to at least some
degree, and the marks are sufficiently similar in appearance, sound, and connotation
Serial No. 87817950
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and commercial impression that a consumer with a general rather than specific
impression of the mark in the ’532 Registration who encounters Applicant’s mark in
the course of obtaining urgent care for an orthopedic injury is likely to believe
mistakenly that the registrant has extended its orthopedic medicine services into the
expedited treatment of such injuries.
Decision: The refusal to register is affirmed.