Minnesota Heart Clinic, P.A.

Trademark Trial and Appeal Board

Jan 29, 2009

No. 76519764 (T.T.A.B. Jan. 29, 2009)

Mailed:
January 29, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Minnesota Heart Clinic, P.A.
________

Serial No. 76519764
_______

Marsha Stolt of Moss & Barnett, P.A. for Minnesota Heart
Clinic, P.A.

Tara J. Pate, Examining Attorney, Law Office 112 (Angela
Bishop Wilson, Managing Attorney).
_______

Before Rogers, Zervas and Taylor, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:
Minnesota Heart Clinic, P.A. (“applicant”) has
appealed from the final refusal of the examining attorney
to register the mark THE C.O.R.E. CLINIC CARDIOMYOPATHY
OPTIMIZATION REHABILITATION EDUCATION (in standard
character form) as a trademark for “educational services,
namely, providing classes, seminars, conferences, and
workshops, and the distribution of course materials in
connection therewith, in connection with the diagnosis and
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 76519764
2
treatment of heart disease” in International Class 41; and
“providing medical services in connection with the
diagnosis and treatment of heart disease” in International
Class 44.1
The examining attorney has refused registration
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark so resembles
the following three previously registered marks that, as
used on applicant’s identified services, applicant's mark
is likely to cause confusion or mistake or to deceive:
1) “C.O.R.E.” (Registration No. 3149083 (“‘083”),
issued September 26, 2006) for “prerecorded audio
tapes, videotapes, CDs, DVDs, and CD-ROMs in the
fields of charitable services, medicine, medical
assistance, hygiene, health and well-being,
emotional and psychological assistance, health
screenings …, [and] multimedia software for use
in training of providing the following,
charitable fundraising, medicine, medical
assistance, emotional and psychological
assistance, health screenings … hygiene, health
and well-being …,” in International Class 9;

2) “C.O.R.E.” (Registration No. 2992836 (“‘836”),
issued September 6, 2005) for “educational
services, namely, providing seminars, courses,
classes, forums, workshops, conferences,
symposia, lectures, retreats, training, and
instruction in the fields of Christianity,
religion, theology, spirituality, ethics, values,
human development, social issues, personal
development, humanitarian needs, life-skills

1 Application Serial No. 76519764, filed June 5, 2003, asserting
a bona fide intention to use the mark in commerce under Section
1(b) of the Trademark Act, 15 U.S.C. §1051(b). Applicant has
entered a disclaimer of the terms CLINIC, CARDIOMYOPATHY and
REHABILITATION EDUCATION.
Serial No. 76519764
3
preparedness, and enrichment of children, teens,
special needs individuals, senior citizens, needy
individuals, and families, basic personal care,
hygiene and wellness and medical and health
issues related thereto and distribution of
educational material in connection therewith;
conducting after-school programs in standardized
test preparation and computer training; academic
mentoring school age children …” in International
Class 41; and

3) “C.O.R.E.” (Registration No. 2952403 (“‘403”),
issued June 17, 2005) for services including
“charitable services, namely, providing medical
services, medical assistance, psychological
counseling, medicine and health screenings to
needy persons; providing information via a global
communications network in the fields of medical
services, medical assistance, psychological
counseling, and medicine and health screenings to
needy persons,” in International Class 44.

These three registrations issued to the same entity.
Applicant has appealed the final refusal of its
application. As discussed below, the refusal to register
is affirmed.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods
Serial No. 76519764
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and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See
also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We first consider the du Pont factor regarding the
similarity or dissimilarity of the goods and services. The
International Class 41 services in the application and the
services in the ‘836 registration both specify educational
services, namely, providing classes, seminars, conferences
and workshops. While the application specifies that such
services concern the diagnosis and treatment of heart
disease, the ‘836 registration specifies that such services
are in the field of “medical and health issues,” which
includes the diagnosis and treatment of heart disease.
Thus, applicant's services are included within the services
recited in the ‘836 registration.
Additionally, applicant's International Class 44
services are included within the services of the ‘403
registration. Applicant recites medical services in
connection with the diagnosis and treatment of heart
disease, which is included within “charitable services,
namely, providing medical services” in the ‘403
registration – “medical services” in the ‘403 registration
include medical services concerning the diagnosis and
Serial No. 76519764
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treatment of heart disease. That registrant’s medical
services are identified as “charitable services” is of no
consequence in that at best the limitation “charitable
services” concerns issues of payment for such services and
hence is merely a trade channel or class of consumer
limitation.2
Because the International Class 41 services are
legally identical to services in the ‘836 registration, and
the International Class 44 services are legally identical
to services of the ‘403 registration, we resolve the du
Pont factor regarding the similarity of the services
against applicant in connection with these registrations.
The examining attorney also relies on the ‘083
registration in refusing applicant's application. This
registration recites goods, not services, including
prerecorded audio tapes, videotapes, CDs, DVDs and CD-ROMs
in the field of medicine. In order to find that there is a

2 Applicant, pointing to the specimens of use filed by
registrant, which it has made of record, argues that registrant
“is not a medical institution but is, rather, a charitable
institution that provides ‘entry level’ medical services to needy
persons who might not otherwise have access to or information
regarding available medical services.” Brief at p. 7. In
considering registrant’s services, we are required to consider
the identification of services as stated and cannot read a
restriction into the identification based on the nature of the
owner of the registration or on registrant's actual use of its
mark. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937 (Fed.
Cir. 1983). Thus, applicant's argument is irrelevant to our
analysis.
Serial No. 76519764
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likelihood of confusion, it is not necessary that the goods
or services on or in connection with which the marks are
used be identical or even competitive. It is enough if
there is a relationship between them such that persons
encountering them under their respective marks are likely
to assume that they originate from the same source or that
there is some association between their sources.
McDonald's Corp. v. McKinley, 13 USPQ2d 1895 (TTAB 1989).
See also In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001).
To establish the relationship between the goods and
services, the examining attorney has introduced into the
record third-party registrations that include educational
goods of the type identified in the ‘083 registration and
educational services of the type recited in International
Class 41 of the application.3 These registrations suggest
that the same entity is likely to be the source of such
educational goods and educational services. See In re
Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214 (TTAB
2001).

3 Applicant challenges the number of registrations relied on by
the examining attorney, arguing that it is a “small number …
relative to the total number of marks registered in connection
with the relevant services….” Brief at p. 8. Applicant has not
indicated the total number of marks registered in connection with
the relevant services, and we do not find the number of third-
party registrations too small in number to not be probative of a
relationship between the goods and services.
Serial No. 76519764
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Through these registrations, and because the
educational goods would be used concurrently with the
educational services, we find that the applicant's services
and the goods of the ‘803 registration are related. The du
Pont factor regarding the similarity of the goods and
services is therefore resolved against applicant.
Next, we consider the du Pont factors regarding the
similarity or dissimilarity of trade channels and
purchasers. To the extent that the services are legally
identical or otherwise closely related, we must assume that
the channels of trade and prospective purchasers for such
services are the same. Genesco Inc. v. Martz, 66 USPQ2d
1260, 1268 (TTAB 2003) (“Given the in-part identical and
in-part related nature of the parties' goods, and the lack
of any restrictions in the identifications thereof as to
trade channels and purchasers, these clothing items could
be offered and sold to the same classes of purchasers
through the same channels of trade.”). Because the
services of the ‘836 registration and applicant's
International Class 41 services are legally identical, we
find that the trade channels and purchasers for such
services are also identical. The same holds true for the
services of the ‘403 registration and applicant's
International Class 44 services, which are legally
Serial No. 76519764
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identical. (Because applicant's International Class 44
services are not limited to non-charitable services, we
construe applicant's identification to include charitable
medical services.)
As for applicant's International Class 41 services and
the goods of the ‘083 registration, we find that the
purchasers and trade channels of such goods and services
are related; the educational services and the instructional
audio tapes, videotapes, CDs, DVDs, and DC-ROMs used in
connection with the educational services would be marketed
to, and purchased by, the same persons.
We therefore resolve the du Pont factors regarding the
similarity or dissimilarity of trade channels and
purchasers against applicant.
We next consider the du Pont factor regarding the
similarities or dissimilarities of the marks.
Specifically, we consider whether applicant's and
registrant’s marks, when viewed in their entireties, are
similar in terms of appearance, sound, connotation and
commercial impression. We are guided by the well-
established principle that although the marks must be
considered in their entireties, there is nothing improper,
under appropriate circumstances, in giving more or less
weight to a particular portion of a mark. See In re
Serial No. 76519764
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National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
In considering applicant's mark, we give greater
weight to those terms which are not merely descriptive of a
feature of applicant's services. Specifically, we give
greater weight to C.O.R.E. and OPTIMIZATION, terms which
applicant has not disclaimed. The other terms in the mark
describe the subject matter or nature of applicant's
services or identify the location where such services are
provided, i.e., in a clinic. We make this finding even
though “C.O.R.E.” is evidently an abbreviation for
CARDIOMYOPATHY OPTIMIZATION REHABILITATION EDUCATION and
would immediately be recognized as such from the mark by
the consuming public. We give greatest weight to C.O.R.E.
because it appears in the initial part of applicant's mark,
because as an abbreviation of a long phrase it is the
portion of applicant's mark that is most likely to be
remembered, and because it is not unusual for consumers to
abbreviate marks. See In re Abcor Development Corp., 588
F. 2d 811, 200 USPQ 215 (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.”).
Serial No. 76519764
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We are not persuaded by applicant’s contention that
“numerous parties use the word ‘core’ as part of trademarks
and service marks to suggest a positive quality”; that
“core” is suggestive; and that when the common element of
conflicting marks is weak, the likelihood of confusion is
reduced. Brief at p. 11. Applicant, in support of its
argument, has made of record:
(i) a definition of “core” taken from Merriam-
Webster Online Dictionary at Merriam-
webster.com stating in part, “a: a basic,
essential, or enduring part (as of an
individual, a class, or an entity) … b: the
essential meaning … c: the inmost or most
intimate part”;

(ii) two lists of applications and registrations
for marks containing CORE, one list which
includes applications and registrations
having “medical or medicine or doctor or
physician or hospital” in the
identifications of goods or services,
obtained from a search on the Trademark
Electronic Search System (TESS) of the
United States Patent and Trademark Office;
and

(iii) printouts from the TARR database showing
marks containing the term CORE, e.g., CORE-
THE CENTER FOR ORTHOPEDIC RESEARCH AND
EDUCATION (Registration No. 3133583); THE
CORE INSTITUTE (Registration No. 3090825);
NURSECORE (Registration No. 3281777); and
CORE DATA REPORTS (Registration No.
3010319).

Applicant's evidence does not persuade us that we should
accord limited protection to C.O.R.E. In our view, the
definition of “core” on which applicant relies and that is
Serial No. 76519764
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most relevant here is “a basic part.” In applying this
definition, we find that the mark is slightly suggestive of
the services, but certainly not weak, as applicant
contends. The lists of applications and registrations do
not indicate the underlying services or goods, and many
marks on the list have “core” embedded within other words,
e.g., ENCORE, THE PRODUCE CORNER WITH BOB COREY and HI-
TORQUE MEMCORE FIRM. CORE in such marks does not have the
meaning that the applicant ascribes to CORE and would not
likely be perceived as a discrete component of the marks.
Further, the applications are only evidence that
applications for marks have been filed with the Office.
Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d
1463 (TTAB 2003). Additionally, several of the TARR
registrations are for medical services unrelated to those
of applicant such as dentistry or orthopedics, and
applicant has not explained why we should consider all
medical fields to be related.
We therefore do not consider registrant’s C.O.R.E.
marks “weak,” as applicant advocates, and find that
C.O.R.E. is the dominant portion of applicant's mark.
Applicant in its promotional material emphasizes the
C.O.R.E. component of its mark, repeatedly referring to
“The C.O.R.E. Clinic” and depicting the mark as follows:
Serial No. 76519764
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See exhibit A to applicant’s request for reconsideration.
Because the dominant term in applicant's mark is the
same as the entirety of registrant’s marks, and because
registrant’s marks do not identify what terms C.O.R.E. is
an abbreviation for, we find that the connotations and
commercial impressions of the marks are likely to be viewed
as similar. Those consumers familiar with applicant's mark
will simply assume that registrant’s mark is a shortened
form of applicant's mark, i.e., the dominant C.O.R.E. part,
minus the individual words that each of those initials
stand for. Those consumers familiar with registrant’s mark
will assume that applicant's mark includes C.O.R.E. because
of some relationship or arrangement with registrant that
allows applicant to use C.O.R.E., albeit as an acronym for
Serial No. 76519764
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specific words. Also, with the inclusion of C.O.R.E. in
all of the marks, the marks are similar in appearance.
Further, because registrant’s marks would be pronounced as
“core” and applicant's mark would likely be shortened to
C.O.R.E. and spoken as “core” by consumers, we find the
marks are similar in sound. Consumers may also shorten
applicant's mark to THE C.O.R.E. CLINIC, which exhibit A
shows applicant uses in its promotional materials, and may
refer to facilities where registrant provides its services
as The C.O.R.E. Clinic, for clinic is a commonly used word
in conjunction with the offering of medical services,
including registrant’s charitable medical services.
Thus, because the connotation, commercial impression,
appearance and sound of the marks are similar, we also
resolve the first du Pont factor against applicant.
In view of the foregoing, considering all of the
relevant du Pont factors, and mindful that in cases such as
the present one, where applicant’s services are legally
identical in part to registrant’s services, the degree of
similarity between the marks which is required to support a
finding of likelihood of confusion is less than it would be
if the services were not identical, see Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698 (Fed. Cir. 1992), we conclude that consumers
Serial No. 76519764
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familiar with registrant's goods and services offered under
the mark C.O.R.E. would be likely to believe, upon
encountering applicant's services under the THE C.O.R.E.
CLINIC CARDIOMYOPATHY OPTIMIZATION REHABILITATION EDUCATION
mark that they both originate with or are somehow
associated with or sponsored by the same entity. The
refusal to register the mark in International Class 41 in
view of the ‘083 and ‘836 registrations under Section 2(d)
is affirmed; and the refusal to register the mark in
International Class 44 under Section 2(d) in view of the
‘403 registration is affirmed.
DECISION: The Section 2(d) refusal to register the
mark for services in International Classes 41 and 44 is
affirmed.