Michael E. Jones, M.D., P.C.

Trademark Trial and Appeal Board

Feb 7, 2020

87547510 (T.T.A.B. Feb. 7, 2020)

Mailed: February 7, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Michael E. Jones, M.D., P.C.
_____
Serial No. 87547510
_____
Aparna (Anantharaman) Peters, Esq.
for Michael E. Jones, M.D., P.C.

Joanna Han, Trademark Examining Attorney, Law Office 126,
Andrew Lawrence, Managing Attorney.
_____
Before Mermelstein, Shaw and Adlin, Administrative Trademark Judges.
Opinion by Adlin, Administrative Trademark Judge:
Applicant Michael E. Jones, M.D., P.C. seeks registration of the mark shown
below (with PLASTIC SURGEONS disclaimed)

for
cosmetics; non-medicated skin care preparations, in
International Class 3;

This Opinion is Not a
Precedent of the TTAB
Serial No. 87547510
2
medicated skin care preparations, namely, medicated
cream, lotion, lightener, and cleanser, in International
Class 5; and

surgery; cosmetic surgery services; cosmetic and plastic
surgery; plastic surgery services; liposuction and surgical
body shaping services; providing a website featuring
information about cosmetic and plastic surgery, in
International Class 44.1

The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the
following two marks registered by different owners that use of Applicant’s mark in
connection with Applicant’s goods and services is likely to cause confusion:
for liquid soaps for
hands, face and body, perfumery; cosmetics and hygienic
preparations, namely, non-medicated preparations all for
the care of skin, in International Class 3;2 and

1 Application Serial No. 87547510, filed July 28, 2017 under Section 1(a) of the Trademark
Act, alleging: first use anywhere on January 1, 2012 for all classes of goods and services; first
use in commerce on the same date for the Class 44 services; and first use in commerce on
January 1, 2016 for the goods in Classes 3 and 5. The application includes this description of
the mark: “the mark consists of LEXINGTON PLASTIC SURGEONS in black, the design of
a silhouette of a woman in profile holding her face appearing in turquoise with light blue
streaks beneath the silhouette, over a gray oval, and two Roman columns in blue and white.”
2 Registration No. 4326383, issued April 30, 2013 (the “’383 Registration”); Section 71
Affidavit accepted, Section 15 Affidavit acknowledged. The registration includes this
description of the mark: “The mark consists of the term ‘LEXINGTON’ in white letters, ‘LEX’
shown above the letters ‘ING’ shown above the letters ‘TON’, all within a blue square, with a
white and red striped square coupled thereto and to the right thereof.”
Serial No. 87547510
3
LEXINGTON MEDICAL CENTER (standard characters,
MEDICAL CENTER disclaimed) for medical and surgical
services, in International Class 44.3

After the refusal became final, Applicant appealed and filed its Appeal Brief,
following which the Examining Attorney requested and was granted a remand to
introduce additional evidence. Applicant then filed its Supplemental Appeal Brief,
with additional “evidence.” The appeal is now fully briefed.
I. Third-Party References Submitted with Applicant’s Supplemental
Appeal Brief
The Examining Attorney objects to some of the new “evidence” which Applicant
included for the first time in its Supplemental Appeal Brief, specifically, Applicant’s
mere reference to “three third-party registrations and common law use of the term
‘LEXINGTON.’” 16 TTABVUE 5. The Examining Attorney points out that despite
Applicant’s claims to the contrary, neither the referenced third-party registrations
themselves, nor evidence of the alleged common law uses (such as website printouts)
were ever introduced into the record of this proceeding, prior to or after Applicant’s
appeal.
While objections to mere references in a brief are not necessary, the Examining
Attorney’s point is well taken. In fact, mere references to registered or unregistered
marks in a brief, without supporting evidence (such as copies of the registrations
themselves or documentary or testimonial evidence of common law use) are no
different than mere attorney argument and not probative. Cai v. Diamond Hong, Inc.,

3 Registration No. 3129217, issued August 15, 2006 under Section 2(f) (the “’217
Registration”); renewed.
Serial No. 87547510
4
901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) ("Attorney argument is no
substitute for evidence.") (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d
1276, 1284, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005)); see also In re U.S. Tsubaki, Inc.,
109 USPQ2d 2002, 2006 (TTAB 2014) (finding that there was no proof to support the
statements in the record by counsel). In any event, because we cannot determine from
the mere registration numbers and trade names alone which goods and services are
offered under the referenced marks and names, even if we considered the registration
numbers and trade names, they would have minimal probative value. See In re Peace
Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17 (TTAB 2018) (“[T]he list does
not include enough information to be probative. The list includes only the serial
number, registration number, mark, and status (live or dead) of the applications or
registrations. Because the goods are not listed, we do not know whether the listed
[applications or] registrations are relevant.”); see also Edom Labs. Inc. v. Licher, 102
USPQ2d 1546, 1550 (TTAB 2012).
By contrast, we have considered the evidence attached to Applicant’s
Supplemental Appeal Brief, and discussed in the Examining Attorney’s Appeal Brief,
specifically the Declaration of Michael E. Jones, M.D. and the printouts from
Registrants’ websites. In re S. Malhotra & Co. AG, 128 USPQ2d 1100, 1103 n.7
(TTAB 2018) (considering evidence submitted with an applicant’s appeal brief when
the examining attorney did not object and discussed it in his brief).

Serial No. 87547510
5
II. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each du Pont factor about
which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and services. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“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.”).
A. The Goods and Services, Channels of Trade and Classes of
Consumers
Before comparing Applicant’s identified goods and services to those in the cited
registrations, we should point out that Applicant’s arguments about the goods and
services misapprehend the applicable law. Specifically, Applicant focuses on the
goods and services Registrants actually offer in the marketplace, and their actual
channels of trade and consumers. While those considerations are typically critical in
infringement cases, they are of little relevance here.
Indeed, when the issue is registration, as opposed to use, we are constrained to
focus on the goods and services as they are identified in the involved application and
Serial No. 87547510
6
cited registrations, without regard to Applicant’s or Registrants’ actual use of the
marks. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1748 (Fed.
Cir. 2017) (“It is well established that the Board may not read limitations into an
unrestricted registration or application.”) (quoting SquirtCo, 216 USPQ at 940).
It was proper, however, for the Board to focus on the
application and registrations rather than on real-world
conditions, because “the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods set forth in the application …
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which sales
of the goods are directed.” Even assuming there is no
overlap between Stone Lion's and Lion's current
customers, the Board correctly declined to look beyond the
application and registered marks at issue. An application
with “no restriction on trade channels” cannot be
“narrowed by testimony that the applicant's use is, in fact,
restricted to a particular class of purchasers.” …

Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Houston Comp. Servs. Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)); In re Jump Designs LLC, 80
USPQ2d 1370, 1374 (TTAB 2006) (unrestricted and broad identifications are
presumed to encompass all goods of the type described).4

4 To the extent that Applicant has cited or introduced evidence suggesting that the mark in
the ’383 Registration is not currently in use for skincare or cosmetic products, that is
irrelevant. If Applicant believed that the cited mark is not in use for these goods, its remedy
was to petition to cancel the Registration, in whole or in part. In re Dixie Rests. Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997) (“Dixie’s argument that DELTA is not
actually used in connection with restaurant services amounts to a thinly-veiled collateral
attack on the validity of the registration … the present ex parte proceeding is not the proper
forum for such a challenge.”); Cosmetically Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 165
USPQ 515, 517 (CCPA 1970) (“in the absence of a counterclaim for cancellation under section
Serial No. 87547510
7
The same principles apply to Applicant’s arguments about relevant consumers’
sophistication and care and the conditions of sale:
Stone Lion effectively asks this court to disregard the broad
scope of services recited in its application, and to instead
rely on the parties’ current investment practices. This
would be improper because the services recited in the
application determine the scope of the post-grant benefit of
registration. “[R]egistration provides the registrant with
prima facie evidence of … the registrant's ‘exclusive right’
to use the mark on or in connection with the goods and
services specified in the certificate of registration.” U.S.
Search LLC v. U.S. Search.com Inc., 300 F.3d 517, 524 [63
USPQ2d 2013] (4th Cir. 2002) (emphasis added); see also
15 U.S.C. § 1115(a) (the registration is prima facie evidence
of the registrant’s exclusive right to use the mark “in
connection with the goods or services specified in the
registration”) …. It would make little sense for the Board
to consider only the parties’ current activities when the
intent-to-use application, not current use, determines the
scope of this post-grant benefit. Parties that choose to
recite services in their trademark application that exceed
their actual services will be held to the broader scope of the
application. See Octocom Sys., 918 F.2d at 943 (stating that
a broad application “is not narrowed by testimony that the
applicant’s use is, in fact, restricted”) … the Board properly
considered all potential investors for the recited services,
including ordinary consumers seeking to invest in services
with no minimum investment requirement. Although the
services recited in the application also encompass
sophisticated investors, Board precedent requires the
decision to be based “on the least sophisticated potential
purchasers.”

Stone Lion, 110 USPQ2d at 1162-63 (some citations omitted). We thus consider the
involved application and cited registrations to cover all goods and services of the type

14 of the Act (15 U.S.C. 1064), it is not open to an applicant to prove abandonment of the
opposer’s registered mark; and appellant’s argument (upon which it now stakes its appeal)
that opposer no longer uses the registered mark ‘Come Alive’ must be disregarded.”).
Serial No. 87547510
8
identified, sold to all usual purchasers for those goods and services, and through all
usual channels of trade. We may not consider any argument that Applicant’s or
Registrants’ actual practices are in fact different. With this in mind, we now turn to
the specific goods and services.
1. Class 3 Goods
The cited mark LEXINGTON & Design ( ) is registered for “liquid soaps for
hands, face and body, perfumery; cosmetics and hygienic preparations, namely, non-
medicated preparations all for the care of skin.” Obviously, Registrant’s “cosmetics …
namely, non-medicated preparations all for the care of skin” are identical to
Applicant’s “cosmetics,” and Registrant’s “hygienic preparations, namely non-
medicated preparations all for the care of the skin” are identical to Applicant’s “non-
medicated skin care preparations.”
Moreover, because the goods are identical, we must presume that the channels of
trade and classes of purchasers are as well. In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding
channels of trade and classes of consumers, the Board was entitled to rely on this
legal presumption in determining likelihood of confusion); Am. Lebanese Syrian
Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028
(TTAB 2011).
The identity of these goods and their overlapping channels of trade and classes of
purchasers not only weigh heavily in favor of finding a likelihood of confusion, but
also reduce the degree of similarity between the marks necessary to find a likelihood
Serial No. 87547510
9
of confusion. In re Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 94 USPQ2d
at 1260; In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).
2. Class 5 Goods
The Examining Attorney also cited the ’383 Registration for “liquid soaps for
hands, face and body, perfumery; cosmetics and hygienic preparations, namely, non-
medicated preparations all for the care of skin” against Applicant’s Class 5 goods,
“medicated skin care preparations, namely, medicated cream, lotion, lightener, and
cleanser.” Although Applicant argues that these goods are “completely different,” the
evidence is to the contrary.
In fact, the Examining Attorney has established that medicated skin care
preparations and non-medicated skin care preparations are commonly offered under
the same marks. For example, Aveeno and Eucerin offer medicated and non-
medicated skin care preparations:

January 29, 2019 Office Action TSDR 29, 31-32, 34. The marks GOLD BOND and
EQUATE are used for medicated and non-medicated lotion:
Serial No. 87547510
10

Serial No. 87547510
11

Id. at 7-8, 35-36. The Examining Attorney also introduced similar additional evidence
showing that medicated and non-medicated skin care products are offered under the
same marks. Id. at 9-11, 24-28, 37-38 (printouts from “dermae.com,” “epionce.com,”
“laroche-posay.us” and “cetaphil.com”).
This evidence establishes that medicated and non-medicated skin care products,
including lotions, cleansers and other preparations, are offered under the same marks
and on the same websites to the same consumers.5 These factors therefore weigh in

5 Applicant’s argument that the channels of trade and classes of consumers differ because it
offers its goods on a “medical practice website,” while Registrant offers its goods on “a high-
Serial No. 87547510
12
favor of finding a likelihood of confusion between Applicant’s Class 5 goods and the
goods in the cited registration.
3. Class 44 Services
The mark in the cited ’217 Registration, LEXINGTON MEDICAL CENTER, is
registered for “medical and surgical services,” which are identical to Applicant’s
“surgery,” and encompass Applicant’s “cosmetic surgery services; cosmetic and plastic
surgery; plastic surgery services; liposuction and surgical body shaping services.”
Thus, like the Class 3 goods, these services are identical or legally identical, and as
with the Class 3 goods, the identity of these services and their presumed overlapping
channels of trade and classes of purchasers not only weigh heavily in favor of finding
a likelihood of confusion, but also reduce the degree of similarity between the marks
necessary to find a likelihood of confusion.6

end international fashion design company” website is misplaced. Neither Applicant’s nor
Registrant’s identification of goods includes any limitation regarding channels of trade or
classes of consumers, and therefore we must presume that the goods travel in all channels of
trade normal for skin care products. Stone Lion, 110 USPQ2d at 1162 (“An application with
‘no restriction on trade channels’ cannot be ‘narrowed by testimony that the applicant’s use
is, in fact, restricted to a particular class of purchasers.’”); Citigroup Inc. v. Capital City Bank
Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs, LLC,
80 USPQ2d 1370, 1374 (TTAB 2006) (goods presumed to be “offered in all channels of trade
which would be normal therefor”); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
6 Applicant’s argument that confusion is unlikely because Registrant is a large South
Carolina “medical complex” while Applicant is a plastic surgery center with nine surgeons
located on Lexington Avenue in New York is not well taken. The cited registration and
involved application are both geographically unrestricted. In re Appetito Provisions Co., 3
USPQ2d 1553, 1554 n.4 (TTAB 1987) (territorial separation of the use of the cited registered
mark from the applicant is irrelevant to determining likelihood of confusion in a
geographically unrestricted application); Peopleware Sys., Inc. v. Peopleware, Inc., 226 USPQ
320, 321 (TTAB 1985) (while opposer and applicant may currently be geographically
separated in their uses, this is irrelevant where applicant seeks a nationwide unrestricted
registration).
Serial No. 87547510
13
B. The Marks
We consider the marks “in their entireties as to appearance, sound, connotation
and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)
(quoting du Pont, 177 USPQ at 567). “Similarity in any one of these elements may be
sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126
USPQ2d 1742, 1746 (TTAB 2018), aff’d, 777 Fed.Appx. 516 (Fed. Cir. 2019) (quoting
In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)).
Here, the marks are similar because they all include the word LEXINGTON.
Applicant argues, however, that the designs in its mark and the ’383 Registration,
and the words PLASTIC SURGEONS in its mark and MEDICAL CENTER in the
’217 Registration, are sufficiently distinguishing that confusion is unlikely. We
disagree.
1. The ’383 Registration
Obviously, Applicant’s design and Registrant’s design are completely different.
Thus, consumers comparing the marks side-by-side would be able to distinguish
them.
However, the test is not whether the marks are distinguishable when considered
side-by-side. Rather, the test is whether the marks are sufficiently similar in terms
of their overall commercial impression that confusion as to the source of the goods
and services offered under the marks is likely to result. San Fernando Elec. Mfg. Co.
v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991). Here, the marks
Serial No. 87547510
14
are similar enough that when used on identical and closely related goods, consumer
confusion is likely to result. Indeed, the marks share the word LEXINGTON, which
is the dominant portion of both.
It is dominant because it comes first. 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 upon the mind of a purchaser and remembered”); see also, Palm
Bay Imports Inc., 73 USPQ2d at 1692; Century 21 Real Estate Corp. v. Century Life
of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
Furthermore, while both marks include designs, the word LEXINGTON is
entitled to greater weight in assessing the likelihood of confusion. In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012); In re Appetito Provisions Co.
Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (holding that “if one of the marks comprises
both a word and a design, then the word is normally accorded greater weight because
it would be used by purchasers to request the goods or services” and “because
applicant’s mark shares with registrant’s mark that element responsible for creating
its overall commercial impression, the marks are confusingly similar”). We recognize
that the term is written on three separate lines in the cited mark, but because
LEXINGTON is a known word, and the letter strings written on each line (LEX, ING
and TON) make more sense if read together than apart, this manner of display is not
particularly significant here. There is no evidence to indicate that LEXINGTON lacks
strength in connection with the relevant goods or services.
Serial No. 87547510
15
While we have not ignored the disclaimed term PLASTIC SURGEONS, it is
obviously highly descriptive if not generic for Applicant’s goods and services and
therefore also entitled to less weight in our analysis. Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms,
this court has noted that the ‘descriptive component of a mark may be given little
weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re Nat’l
Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)).
In short, while we have considered the marks in their entireties, they share and
are dominated by the identical term LEXINGTON, which is how consumers will
research and request the goods. This makes the marks more similar than dissimilar
in overall commercial impression. This factor also weighs slightly in favor of finding
a likelihood of confusion.
2. The ’217 Registration
Because it does not include a design component, the LEXINGTON MEDICAL
CENTER mark is more similar to Applicant’s mark than the mark in the ’383
Registration. Like Applicant’s mark, its dominant element is the word LEXINGTON,
both because it comes first and because MEDICAL CENTER is highly descriptive of,
if not generic for Registrant’s services. Furthermore, as indicated above, the word
LEXINGTON is more important in our analysis than the design in Applicant’s mark.
In short, because they share and begin with the term LEXINGTON, Applicant’s mark
and the mark in the ’217 Registration look and sound somewhat similar.
More importantly, they convey very similar meanings and have quite similar
commercial impressions. Indeed, LEXINGTON MEDICAL CENTER conveys a
Serial No. 87547510
16
hospital, clinic or other health care facility, and therefore consumers familiar with
the Lexington Medical Center could very well believe that LEXINGTON PLASTIC
SURGEONS refers to a group of plastic surgeons who practice or operate at the
LEXINGTON MEDICAL CENTER. Thus, rather than distinguishing Applicant’s
mark, the term PLASTIC SURGEONS could exacerbate confusion. This factor weighs
in favor of finding a likelihood of confusion.
C. Consumer Sophistication and Purchaser Care
Applicant’s argument that the relevant consumers are sophisticated and will
exercise care in purchasing is unsupported by any evidence. Furthermore, the record
is to the contrary with respect to skin care preparations. For example, as the Walmart
website listings depicted above reveal, bottles of medicated and non-medicated
EQUATE lotions are sold for less than $5.00. This factor is neutral with respect to
Applicant’s goods in Classes 3 and 5.
However, with respect to Applicant’s Class 44 surgical services, we accept
Applicant’s argument that the relevant consumers will make their purchasing
decisions carefully, and that this weighs against a finding of likelihood of confusion.
Nevertheless, this factor is outweighed by the legal identity of Applicant’s and
Registrant’s services, and the close similarity of their marks, including the possibility
that consumers will believe that LEXINGTON PLASTIC SURGEONS are affiliated
with LEXINGTON MEDICAL CENTER, or that the services offered under
LEXINGTON PLASTIC SURGEONS are endorsed or offered by LEXINGTON
MEDICAL CENTER. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ
49, 50 (Fed. Cir. 1986); Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434
Serial No. 87547510
17
F.2d 1403, 168 USPQ 110, 112 (CCPA 1970); see also, HRL Assocs., Inc. v. Weiss
Assocs., Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, 902 F.2d 1546, 14 USPQ2d 1840
(Fed. Cir. 1990) (similarities of goods and marks outweighed sophisticated
purchasers, careful purchasing decision, and expensive goods).
D. Lack of Actual Confusion
Applicant’s argument that there has been no actual confusion is not well taken,
because there is no evidence supporting it. That is, although Dr. Jones declared that
Applicant has been offering plastic surgery and cosmetics services since 2005,7 there
is no evidence regarding the extent of Applicant’s or either Registrant’s use of
LEXINGTON marks, such as advertising practices, the number of procedures
performed or products sold. Therefore, we cannot gauge whether or the extent to
which there has been a meaningful opportunity for confusion to occur. See Nina Ricci
S.A.R.L. v. E.T.F. Enters. Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989)
(“The absence of any showing of actual confusion is of very little, if any, probative
value here because (1) no evidence was presented as to the extent of ETF’s use of the
VITTORIO RICCI mark on the merchandise in question in prior years ….”); In re
Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). But see In re Guild Mortg.
Co., 912 F.3d 1376, 129 USPQ2d 1160, 1164 (Fed. Cir. 2019) (in which the applicant
introduced declaration testimony concerning the lack of actual confusion “for a

7 Dr. Jones merely testifies that Applicant “has been in operation since October 2005,”
without indicating whether Applicant has used any marks including LEXINGTON since that
time. 13 TTABVUE 28 (Jones Dec. ¶ 3). As indicated, the involved application asserts first
use of the involved mark in commerce for surgery services on January 1, 2012, and first use
for skin care preparations on January 1, 2016.
Serial No. 87547510
18
particularly long period of time – over 40 years – in which the two businesses operated
in the same geographic market – southern California – without any evidence of actual
confusion”). This factor is neutral.
III. Conclusion
Applicant’s mark is similar to both Registrants’ marks, the goods and services are
identical or closely related, and the channels of trade and classes of consumers
overlap. While we assume that surgical patients will exercise care in purchasing, they
will encounter Applicant’s and Registrant’s surgical services in the same channels of
trade under similar marks. As a result, their care in purchasing will not be enough
to prevent confusion.

Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Trademark Act is affirmed based on both cited registrations.