Merion Publica-tions, Inc.

Trademark Trial and Appeal Board

Nov 30, 2000

No. 75277306 (T.T.A.B. Nov. 30, 2000)

Hearing: June 13, 2000 Paper No. 20
TEH
11/30/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Merion Publications, Inc.
________
Serial No. 75/277,306
_______
Rachel L. Brendzel of Blank Rome Comisky & McCauley, LLP for
Merion Publications, Inc.
Caroline Whitmire, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney).
_______
Before Simms, Bucher and Holtzman, Administrative Trademark
Judges.1
Opinion by Holtzman, Administrative Trademark Judge:
An application has been filed by Merion Publications, Inc.
to register ADVANCE FOR HEALTH INFORMATION EXECUTIVES for a
"magazine featuring information systems for executives and
administrators in the healthcare industry."2 The application is

1 Administrative Trademark Judge Rany Simms has been substituted on
this panel for Administrative Trademark Judge Linda Mcleod who is no
longer with the Office. The change in the composition of the panel
does not necessitate a rehearing of the oral argument. See, In re
Bose, 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985).
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/277,306
2
based on an allegation of a bona fide intention to use the mark
in commerce.
In the first Office action (issued September 22, 1997) the
Trademark Examining Attorney required a disclaimer of the wording
"FOR HEALTH INFORMATION EXECUTIVES" under Section 6 of the
Trademark Act on the ground that the phrase is merely descriptive
of both the subject matter and the intended audience for
applicant's magazines. On October 15, 1997, applicant filed an
amendment to allege use under Trademark Rule 2.76 alleging dates
of first use and first use in commerce of June 1997. Then on
February 26, 1998, applicant filed a response to the Office
action wherein applicant amended the application to seek
registration under Section 2(f) of the Act,
"...in part as to FOR HEALTH INFORMATION EXECUTIVES because
the mark in its entirety has acquired distinctiveness as to
'ADVANCE FOR' combined with a professional designation.
Consequently, Applicant's mark ADVANCE FOR HEALTH
INFORMATION EXECUTIVES has become distinctive of the goods
as evidenced by ownership of [a number of registrations];
all on the Principal Register for substantially the same
mark for related goods."
Applicant based its 2(f) claim on ownership of eleven
registrations on the Principal Register, including a registration
for the mark ADVANCE FOR HEALTH INFORMATION PROFESSIONALS, each
registration for a "magazine featuring the allied health

2 Application Serial No. 75/277,306 filed April 18, 1997.
Ser No. 75/277,306
3
professions" and each including a claim of 2(f) as to the wording
following ADVANCE in the respective marks.3
The Examining Attorney rejected applicant's evidence
contending that none of the registrations is for the same mark as
the mark herein, and continued the requirement for a disclaimer.
Applicant then submitted additional argument and evidence which
was also found to be insufficient by the Examining Attorney and
when the requirement for a disclaimer was made final, applicant
appealed. Both applicant and the Examining Attorney filed briefs
on appeal, and applicant filed a reply brief. An oral hearing
was held.4
As a preliminary matter, and to clarify the issue on appeal,
we find that applicant has waived any claim of inherent
distinctiveness of the phrase FOR HEALTH INFORMATION EXECUTIVES.
Applicant, in response to the Examining Attorney's first Office

3 These registrations are for the following marks: ADVANCE FOR HEALTH
INFORMATION PROFESSIONALS; ADVANCE FOR SPEECH-LANGUAGE PATHOLOGISTS &
AUDIOLOGISTS; ADVANCE FOR RESPIRATORY CARE PRACTITIONERS; ADVANCE FOR
RADIOLOGIC SCIENCE PROFESSIONALS; ADVANCE FOR ADMINISTRATORS IN
RADIOLOGY & RADIATION ONCOLOGY; ADVANCE FOR ADMINISTRATORS OF THE
LABORATORY; ADVANCE FOR DIRECTORS IN REHABILITATION; ADVANCE FOR
MANAGERS OF RESPIRATORY CARE; ADVANCE FOR MEDICAL LABORATORY
PROFESSIONALS; ADVANCE FOR OCCUPATIONAL THERAPISTS; and ADVANCE FOR
PHYSICAL THERAPISTS.
4 This case was reassigned to a different Examining Attorney to write
the appeal brief and to argue the case at the oral hearing.
Ser No. 75/277,306
4
action, amended the application to seek registration under
Section 2(f) as to the wording FOR HEALTH INFORMATION EXECUTIVES
without any argument or even a statement that the phrase is not
descriptive. Applicant did not deviate from this position until
it filed its reply brief on appeal. In its reply brief,
applicant for the first time asserted that it "does not concede
that the term 'Health Information Executives' is descriptive" and
that the 2(f) amendment was requested by applicant "merely to aid
in its speedy prosecution." (Applicant's reply, pp.2-3).
Unless the question of inherent distinctiveness is clearly
reserved, a claim of acquired distinctiveness under Section 2(f)
is tantamount to a concession that the mark is not inherently
distinctive. See Yamaha International Corp. v. Hoshino Gakki Co.
Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988) and
General Foods Corporation v. MGD Partners, 224 USPQ 479, 485
(TTAB 1984). Applicant has taken inconsistent positions on this
matter and has not clearly stated an intention to maintain
alternative claims. In fact, in response to the Board's specific
question on this issue at the oral hearing, applicant's counsel
expressly stated that applicant was not arguing the Section 2(f)
claim in the alternative. Under the circumstances, we treat any
claim of inherent distinctiveness of the phrase "FOR HEALTH
INFORMATION EXECUTIVES" as waived, the phrase is accordingly
regarded as merely descriptive within the meaning of Section
Ser No. 75/277,306
5
2(e)(1), and the sole issue on appeal is the sufficiency of
applicant's evidence under Section 2(f).5
We turn then to the merits of the appeal. Applicant argues
that the phrase FOR HEALTH INFORMATION EXECUTIVES has acquired
distinctiveness essentially on the basis of the following
evidence. First, applicant claims ownership of an "ADVANCE FOR"
"family" of marks and argues that the mark ADVANCE FOR HEALTH
INFORMATION EXECUTIVES is "an offspring of the ADVANCE FOR family
of marks."
Applicant has also based its claim of acquired
distinctiveness as permitted by Trademark Rule 2.41(b) on its
ownership of an existing registration for the mark ADVANCE FOR
HEALTH INFORMATION PROFESSIONALS. Applicant, relying on a
likelihood of confusion analysis to support its position that the
two marks convey the same commercial impression, concludes based
thereon that the marks are "the same" for purposes of
establishing acquired distinctiveness under that rule. In an

5 On a related matter, the portion of the mark for which applicant is
seeking 2(f) registration is entirely unclear. For example, in
response to the first Office action, applicant asserted that it is
seeking registration under Section 2(f) "in part as to FOR HEALTH
INFORMATION EXECUTIVES" (Applicant's February 26, 1998 response,
unnumbered p.2). However, in its request for reconsideration applicant
claimed that the "entire mark...is entitled to registration pursuant to
Section 2(f)." (Applicant's request for reconsideration, p.2). Later
still, in its appeal brief, applicant took the position that the 2(f)
claim should apply only to the wording HEALTH INFORMATION EXECUTIVES
(Applicant's brief, pp.2,5). We are deciding this case on the basis of
whether applicant has sufficient evidence of acquired distinctiveness
as to the phrase "FOR HEALTH INFORMATION EXECUTIVES."
Ser No. 75/277,306
6
attempt to demonstrate that the marks create "identical
commercial impression[s]," applicant has submitted dictionary
definitions of the words "executive" and "professional."
Applicant points to the definition of "executive" as "having
administrative or managerial responsibility," and the definition
of "professional" as "having a particular profession as a
permanent career." Applicant claims that these definitions show
that "executive" and "professional" are "interchangeable" words.
Finally, applicant has submitted evidence that the mark
ADVANCE FOR HEALTH INFORMATION EXECUTIVES has acquired
distinctiveness through actual use. In support of this claim,
applicant has submitted pages from its "AdvanceWeb" website which
includes a form for subscribing to the publication, information
for advertisers, articles of interest, and a vendor directory
"all specifically focused around applicant's ADVANCE FOR HEALTH
INFORMATION EXECUTIVES mark." Applicant has also relied on pages
from two third-party websites, docsolutions.com and Voncomed.com,
both of which contain references to applicant's ADVANCE FOR
HEALTH INFORMATION EXECUTIVES magazine.
The burden of proving that a mark, or a portion of a mark,
has acquired distinctiveness is on the applicant. See Yamaha
International Corp. v. Hoshino Gakki Co., Ltd., supra. Applicant
has not met this burden.
Ser No. 75/277,306
7
First, applicant's claim regarding the effect of its
asserted family of marks on the specific issue in this case is
untenable. Whether or not applicant owns a family of "ADVANCE
FOR"6 marks or whether "ADVANCE FOR" is a distinctive component
of applicant's composite mark has no bearing on the question of
whether the wording which is not part of the so-called family
name should be disclaimed or has acquired distinctiveness. It is
clear that an unregistrable component of an otherwise registrable
mark must, in the absence of a 2(f) showing, be disclaimed. See
Section 6 of the Trademark Act.
We turn then to applicant's claim of acquired
distinctiveness of the phrase FOR HEALTH INFORMATION EXECUTIVES
based on its ownership of a registration for the mark ADVANCE FOR
HEALTH INFORMATION PROFESSIONALS. Applicant has applied the
wrong test in analyzing the similarity of these two marks. We
begin by noting that Section 7(b) of the Trademark Act provides
that a registration on the Principal Register "shall be prima
facie evidence of the validity of the registration, registrant's
ownership of the mark and of registrant's exclusive right to use
the mark in commerce in connection with the goods or services

6 It would appear that the "family" portion of the mark as shown in
applicant's specimens and promoted on its web page, if anything, is the
single word "ADVANCE," not the phrase "ADVANCE FOR."
Ser No. 75/277,306
8
specified in the certificate." See also In re Electro Products
Laboratories, Inc., 156 USPQ 54 (TTAB 1967). Thus, Section 7(b)
creates the basis for permitting reliance on an existing
registration, under certain circumstances, to support a claim
that distinctiveness has been transferred to a mark which is
essentially the same as the registered mark. Further, Trademark
Rule 2.41 provides that, in appropriate cases, "ownership of one
or more prior registrations on the Principal Register...of the
same mark may be accepted as prima facie evidence of
distinctiveness."
The ultimate question accordingly involves a determination
of whether the current mark and the registered mark ADVANCE FOR
HEALTH INFORMATION PROFESSIONALS, are "the same" for purposes of
Rule 2.41(b). Applicant is essentially seeking to "tack" the use
of the registered mark to its use of the present mark for
purposes of transferring distinctiveness to the new mark. See,
for example, In re Flex-O-Glass, Inc., 194 USPQ 203 (TTAB 1977).
Thus, the analysis used to determine whether applicant's present
mark is "the same mark" as its previously registered mark, for
purposes of that rule, is similar to the analysis used in
"tacking" cases to determine whether a party may rely, for
purposes of establishing priority, on its prior use of a mark
which is not identical to its present mark. See In re Dial A
Mattress Operating Corp., 52 USPQ2d 1910 (TTAB 1999) and TMEP
Ser No. 75/277,306
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§ 1212.04. In this situation, the issue is whether the present
mark and the previous mark are "legal equivalents." See Van
Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d
1866 (Fed. Cir. 1991) and Institut National Des Appellations
d'Origine v. Brown-Forman Corp., 47 USPQ2d 1875 (TTAB 1998).
To meet the legal equivalents test, the marks must be
indistinguishable from one another or create the same, continuing
commercial impression such that the consumer would consider both
as the same mark. Compania Insular Tabacalera, S. A. v. Camacho
Cigars, Inc., 167 USPQ 299 (TTAB 1970). As applicant correctly
notes, a minor difference in the marks such as mere pluralization
or an inconsequential modification or modernization of the later
mark will not preclude application of the rule. See In re Loew's
Theatres, Inc., 223 USPQ 513 (TTAB 1984) aff'd, 769 F.2d 764, 226
USPQ 865 (Fed. Cir. 1985) and In re Flex-O-Glass, Inc., supra.
At the same time, however, it is clear that the "legal
equivalents" standard is considerably higher than the standard
for "likelihood of confusion." Thus, the fact that two marks may
be confusingly similar does not necessarily mean that they are
legal equivalents. Van Dyne-Crotty, Inc. v. Wear-Guard Corp.,
supra, and Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d
1224 (TTAB 1993).
In this case, the two marks are not legal equivalents.
Applicant's present mark ADVANCE FOR HEALTH INFORMATION
Ser No. 75/277,306
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EXECUTIVES, while perhaps similar to, is certainly not
indistinguishable from, its registered mark ADVANCE FOR HEALTH
INFORMATION PROFESSIONALS. Moreover, contrary to applicant's
contention, the words "EXECUTIVE" and "PROFESSIONAL" do not
convey the same meaning or commercial impression and their use
results in more than a minor difference in the marks. The
dictionary definitions supplied by applicant show that there may
be a connection between the two words, but they do not in any way
demonstrate that these terms are interchangeable or that one word
is a synonym for the other. Applicant's own evidence reinforces
the perception that the terms have separate and distinct meanings
and commercial impressions. As can be seen from the printout
from applicant's website, it is clear that the two titles are
used to identify two different magazines and directed to two
distinct audiences, "each serving a different discipline" in the
health care field. (See Applicant's Exh. E attached to its
request for reconsideration filed September 15, 1999). Thus,
applicant itself promotes the different connotations of the two
marks to its subscribers.
Finally, applicant's limited evidence of actual use of the
present mark is not sufficient to establish that the phrase "FOR
HEALTH INFORMATION EXECUTIVES" has acquired distinctiveness for
applicant's magazines. Acquired distinctiveness is an
association in the consumer's mind between the mark and the
Ser No. 75/277,306
11
source of the goods or services. In this case, the third-party
references to applicant's mark are not significant because they
do not indicate anything about consumer or industry perception of
the mark. The website, voncomed.com, merely provides a link to
applicant's magazine along with similar links to other industry
sites. The second reference, appearing on the web page for
docsolutions.com, merely provides information about an article
which appears in applicant's magazine. Moreover, the mere
display of the mark on applicant's web page, or the offer of a
subscription or information about the magazine on its website
does not establish this association. Absent specific evidence
of, for example, the length of time the page for this magazine
has been in existence, the number of "hits" received from
visitors to the particular site, the advertising figures for the
magazine, the number of subscribers to the magazine within the
relevant market, or the revenue generated from subscriptions to
the magazine, the evidence submitted by applicant is not
particularly meaningful.7
Decision: The requirement for a disclaimer of the phrase
FOR HEALTH INFORMATION EXECUTIVES is affirmed. However, if
applicant submits the required disclaimer within thirty days of

7 The evidence submitted for the first time in the reply brief is
unsupported and/or untimely and has not been considered herein.
Ser No. 75/277,306
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the mailing date stamped on this decision, the refusal will be
set aside. See Trademark rule 2.142(g).
R. L. Simms
D. E. Bucher
T. E. Holtzman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board