National Health Information Network, Inc.

Trademark Trial and Appeal Board

Feb 11, 2003

No. 75602760 (T.T.A.B. Feb. 11, 2003)

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re National Health Information Network, Inc.
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Serial No. 75/602,760
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Clark R. Cowley for National Health Information Network,
Inc.
Kathleen M. Vanston, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
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Before Hanak, Chapman and Bottorff, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
National Health Information Network, Inc. (applicant)
seeks to register in typed drawing form CARE RX for
“computer software for use in disease management and
prescription management.” The application was filed on
December 2, 1998 with a claimed first use date of February
14, 1997.
Citing Section 2(d) of the Trademark Act, the
Examining Attorney refused registration on the basis that
applicant’s mark, as applied to applicant’s goods, is
likely to cause confusion with the mark RXCARE, previously
registered in typed drawing form for “electrical and
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2
scientific apparatus; namely, pharmacy management software
applications.” Registration No. 2,404,562.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request a
hearing.
Before turning to the issue of likelihood of
confusion, one matter should be clarified at the outset.
At page 10 of its brief, applicant argues that as between
applicant and registrant, priority rests with applicant
because applicant allegedly first used its mark on February
14, 1997 and registrant did not file its intent-to-use
application which matured into Registration No. 2,404,562
until March 19, 1998. Applicant’s argument is legally
insufficient. Section 2(d) of the Trademark Act prohibits
the registration of a mark “which so resembles a mark
registered in the Patent and Trademark Office … as to be
likely, when used on or in connection with the goods of the
applicant, to cause confusion, or to cause mistake, or to
deceive.” Cf. In re Calgon Corp., 435 F.2d 596, 168 USPQ
278 (CCPA 1971) (An applicant cannot collaterally attack
the validity of a registration cited by the Examining
Attorney.).
Ser. No. 75/602,760
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We turn now to the issue of likelihood of confusion.
In any likelihood of confusion analysis, two key, although
not exclusive, considerations are the similarities of the
marks and the similarities of the goods. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976) (“The fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and
differences in the marks.”).
Considering first the goods, we note that registrant’s
goods are software for pharmacy management. Certain of
applicant’s goods are software for prescription management.
Obviously, pharmacies fill prescriptions. Thus,
registrant’s goods are broad enough to include certain of
applicant’s goods. That is to say, software for pharmacy
management is broad enough to encompass software for
prescription management. Hence, the goods are in part
legally identical.
Considering next the marks, we note at the outset that
when the goods are in part legally identical, as is the
case here, “the degree of similarity [of the marks]
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of
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America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992).
Applicant’s mark CARE RX is but a mere transposition
of registrant’s mark RXCARE. It is true that the
registered mark is depicted as one word, whereas
applicant’s mark is depicted as two words. However, we
find this to be a very minor difference which could be
easily overlooked by purchasers of software for pharmacy
and prescription management. Indeed, in this regard we
note that at page 10 of its brief, applicant’s counsel
overlooked this difference when in the second line he
depicted registrant’s mark not as one word, but rather as
two words, that is, as RX CARE.
Of course, not all transpositions of words will result
in marks which are confusingly similar. However, in this
particular instance, the marks RXCARE and CARE RX convey
the identical connotation. Moreover, the two marks are
quite similar in pronunciation, and are at least somewhat
similar in terms of visual appearance.
Given the similarities of the two marks and the fact
that registrant’s identification of goods (software for
pharmacy management) encompasses certain of applicant’s
identification of goods (software for prescription
management), we find that there exists a likelihood of
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confusion. Of course, it need hardly be said that to the
extent that there are doubts on the issue of likelihood of
confusion, said doubts must be resolved in favor of the
registrant. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1691 (Fed. Cir. 1993).
One final comment is in order. Applicant argues at
great lengths that the purchasers of pharmacy management
and prescription management software are sophisticated and
exercise care in making their purchases. Applicant has
also argued that the relevant goods are expensive.
However, applicant has offered no evidence whatsoever in
support of these contentions. A pharmacist who owns but a
single pharmacy is not necessarily sophisticated when it
comes to the purchase of software for pharmacy and/or
prescription management. Moreover, this solo pharmacist
may or may not exercise care in the purchase of such
software. Likewise, such software may or may not be
expensive. If applicant wished to show that the software
in question was expensive and was purchased only by
sophisticated individuals exercising great care, then
applicant should have made of record evidence to establish
these facts.
Decision: The refusal to register is affirmed.