National Health Information Network, Inc.

Trademark Trial and Appeal Board

Dec 10, 2002

No. 75597273 (T.T.A.B. Dec. 10, 2002)

Mailed: December 10, 2002
Paper No. 12
cl

UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re National Health Information Network, Inc.
________
Serial No. 75/597,273
_______
Clark R. Cowley of Whitaker, Chalk, Swindle & Sawyer,
L.L.P. for National Health Information Network, Inc.
Kathleen M. Vanston, Trademark Examining Attorney, Law
Office 103 (Daniel P. Vavonese, Acting Managing Attorney).
_______
Before Simms, Cissel and Bucher, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
National Health Information Network, Inc. (applicant),
a Texas corporation, has appealed from the final refusal of
the Trademark Examining Attorney to register the mark shown
below:
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/597,273
2
for computer software for use in healthcare management.1
A copy of applicant’s specimen of record is reproduced
below in reduced form:
The Examining Attorney has refused registration under
Section 2(d) of the Act, 15 USC §1052(d), on the basis of
Registration No. 2,404,562, issued November 14, 2000, for
the mark RXCARE for “electrical and scientific apparatus;
namely, pharmacy management software applications.”2

1 Application Serial No. 75/597,273, filed November 17, 1998, based upon
allegations of use since February 14, 1997. Applicant has disclaimed
the letters “RX.”
2 The underlying application for this registration was filed on March 19,
1998, prior to applicant’s filing date. After the mark in this prior
pending application was cited as a potential bar under Section 2(d) of
the Act, applicant’s application was suspended pending disposition of
the earlier filed application. See TMEP §1208.02(c).
Serial No. 75/597,273
3
Applicant and the Examining Attorney have submitted
briefs, but no oral hearing was requested.
The Examining Attorney argues that applicant’s mark,
CARE RX and heart design, is a transposition of
registrant’s mark, RXCARE. According to the Examining
Attorney, both marks create the same basic commercial
impression. The Examining Attorney contends that the test
for likelihood of confusion is not whether the respective
marks can be distinguished in a side-by-side comparison,
and that purchasers may retain only a general, rather than
a specific, impression of a particular trademark.
Concerning the respective goods, the Examining
Attorney argues that applicant’s broadly described
healthcare management software could include software for
pharmaceutical applications similar to registrant’s
pharmacy management software, and that these goods may
therefore travel in the same channels of trade. More
particularly, the Examining Attorney argues that
registrant’s computer software for pharmacy management
applications may include software for managing the pharmacy
business as well as for the management of customer
prescription information, whereas applicant’s healthcare
management software could includes software for the
management of pharmacies as well. In other words,
Serial No. 75/597,273
4
applicant’s computer software as identified in the
application is broad enough to include registrant’s
pharmacy management software. While the Examining Attorney
appears to concede that prospective purchasers of the
software may be relatively sophisticated, the Examining
Attorney contends that this fact does not necessarily mean
that the purchasers are sophisticated in the field of
trademarks or that they would be immune from confusion
where similar marks are used on similar products. The
Examining Attorney also asks that we resolve any doubt in
favor of registrant.
Applicant, on the other hand, maintains that confusion
is unlikely. Applicant’s counsel states that applicant is
in the business of writing and licensing computer programs
for use in the medical industry, primarily for pharmacies
and large grocery chains. Counsel states that negotiations
of these licenses often take months and that it is not
possible for a pharmacy to purchase a license, drafted by
counsel, as well as a computer program, without knowing
that the computer software comes from applicant. Further,
counsel indicates that licensing fees to the major chain
store pharmacies may range from hundreds of thousands of
dollars to millions of dollars.
Serial No. 75/597,273
5
Although applicant argues that the marks are distinct,
applicant places significant emphasis on the assertion that
purchasers of the respective software are sophisticated
buyers who purchase the software only after careful
consideration.3 Applicant also argues that registrant’s
software is for business management applications whereas
applicant’s software is sold to pharmacies for disease
management as well as prescription management. Finally,
citing authority, applicant asks us to resolve doubt in
favor of publication.
Upon careful consideration of the arguments and the
limited record of this case, we conclude that confusion is
likely.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
likelihood of confusion factors set forth in In re E.I.
du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). In considering the evidence of record on
these factors, we keep in mind that “[t]he fundamental
inquiry mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods

3 In its main brief, 11-12, applicant acknowledges only that employees of
pharmacies “could potentially become confused,” but that those persons
are not the potential purchasers of the respective software.
Serial No. 75/597,273
6
[or services] and differences in the marks.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976).
First, the marks are similar in that both consist of
the words CARE RX, albeit in a different order. That is to
say, applicant’s mark is essentially a transposition of
registrant’s mark, with the addition of the design element.
Where the primary difference between marks is the
transposition of the elements that make up the marks and
where this transposition does not change the overall
commercial impression, there may be a likelihood of
confusion. See, e.g., In re Wine Society of America Inc.,
12 USPQ2d 1139 (TTAB 1989)(THE WINE SOCIETY OF AMERICA and
design, for wine club membership services including the
supplying of printed materials, sale of wines to members,
conducting wine tasting sessions and recommending specific
restaurants offering wines sold by applicant, held likely
to be confused with AMERICAN WINE SOCIETY 1967 and design,
for a newsletter, bulletin and journal of interest to
members of the registrant); In re Nationwide Industries
Inc., 6 USPQ2d 1882 (TTAB 1988)(RUST BUSTER, with “RUST”
disclaimed, for rust-penetrating spray lubricant held
likely to be confused with BUST RUST for penetrating oil);
In re General Tire & Rubber Co., 213 USPQ 870 (TTAB 1982)
Serial No. 75/597,273
7
(SPRINT STEEL RADIAL, with “STEEL” and “RADIAL” disclaimed,
for tires held likely to be confused with RADIAL SPRINT,
with “RADIAL” disclaimed, for tires). See also TMEP
§1207.01(b)(vii).
The marks here also have a similar suggestive meaning
or connotation: care in the dispensing of prescriptions.
The similarities in sound, appearance and meaning or
connotation outweigh the relatively minor differences.
With respect to the goods, we agree with the Examining
Attorney that applicant’s software for healthcare
management is broadly described and could include (and in
fact does include) software for the management of
prescriptions by pharmacies. Registrant’s goods are
software for pharmacy management. While applicant tries to
limit registrant’s goods to use only in the administration
of a pharmacy business, the identification is not so
limited, referring only to “pharmacy management
applications.” This could well include software for use in
the management of prescription information.
The respective software products may also travel in
the same or similar channels of trade and be sold to the
same class of potential purchasers--pharmacies. Of course,
it is not necessary that the respective goods be identical
or even competitive in order to support a finding of
Serial No. 75/597,273
8
likelihood of confusion. Rather, it is sufficient that the
goods are related in some manner, or that the circumstances
surrounding their marketing are such that they would be
likely to be encountered by the same persons in situations
that would give rise, because of the marks used thereon, to
a mistaken belief that they originate from or are in some
way associated with the same source, or that there is an
association or connection between the sources of the
respective goods. See, for example, In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed.
Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991); and In re International Telephone & Telegraph Corp.,
197 USPQ2d 910 (TTAB 1978).
While the Examining Attorney has not discussed in
detail the question of purchaser sophistication, the
Examining Attorney does appear to concede that the
purchasers may be relatively sophisticated. The software
in the respective identifications is in fact likely to be
purchased by pharmacies. However, while counsel argues
that licenses to the major chain store pharmacies may cost
hundreds of thousands of dollars, not only is this
assertion unsupported by any evidence of record, such as an
affidavit or declaration from a knowledgeable employee of
applicant, but also this high cost is not an inherent or
Serial No. 75/597,273
9
necessary element of the respective descriptions of goods.
That is to say, computer software for pharmacy management
may not intrinsically be as expensive as applicant’s
counsel claims applicant’s particular products are. In any
event, we must consider the issue of likelihood of
confusion on the basis of the identifications in the
application and the cited registration, since it has been
repeatedly held that in determining the registrability of a
mark, this Board is constrained to compare the goods and/or
services as identified in the application with the goods
and/or services as identified in the registration. See In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997); Octocom Systems Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990); and Canadian Imperial Bank of Commerce, National
Association v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987). We are not free to limit the scope
of those descriptions based on mere argument of counsel.
Furthermore, in likelihood-of-confusion cases, as
contrasted with mere descriptiveness or genericness cases,
doubts are resolved in favor of the registrant. It is well
established that one who adopts a mark similar to the mark
of another for the same or closely related goods or
services does so at his own peril, and to the extent that
Serial No. 75/597,273
10
we have any doubt as to likelihood of confusion, we must
resolve that doubt in favor of the prior user or
registrant. See J & J Snack Foods Corp. v. McDonald’s
Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); and
In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d
1025 (Fed Cir. 1988). The authority applicant has relied
upon deals with issues of mere descriptiveness or
genericness, where the doubt is resolved in favor of the
applicant--that is, in favor of publication. Those cases
are therefore distinguishable.
Finally, applicant raises several additional issues
which we briefly address. First, applicant argues that it
has a right to registration over the cited registrant
because applicant commenced use in commerce prior to the
first use of the registered mark and because the cited
registration had not become incontestable at the time
applicant filed its application. Applicant also maintains
that the Examining Attorney should have determined who
among the pending applications had prior rights, and that a
subsequently used mark cannot preclude the registration of
an earlier-used mark.
As the Examining Attorney has noted, however, the
priority among conflicting pending applications is
determined based on the effective filing dates of the
Serial No. 75/597,273
11
applications without regard to whether an assertion of use
in a later-filed application is earlier than the filing
date or the dates of use asserted in the earlier-filed
application. See Trademark Rule 2.83(a):
Whenever an application is made for
registration of a mark which so resembles
another mark or marks pending registration as
to be likely to cause confusion or mistake or
to deceive, the mark with the earliest
effective filing date will be published in the
“Official Gazette” for opposition if eligible
for the Principal Register, or issued a
certificate of registration if eligible for the
Supplemental Register.
And, as stated in TMEP §1208.01:
In ex parte examination, priority among
conflicting pending applications is
determined based on the effective filing
dates of the applications, without regard to
whether the dates of use in a later-filed
application are earlier than the filing date
or dates of use of an earlier-filed
application, whether the applicant in a
later-filed application owns a registration
for a mark that would be considered a bar
to registration of the earlier-filed
application, or whether an application was
filed on the basis of use of the mark in
commerce or a bona fide intent to use the
mark in commerce.
See also King Candy Co. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974)(“Section 2(d) says an
applicant can register, unless his mark is likely to cause
confusion with a mark 'registered in the Patent Office…’”
(emphasis added)). That is, the language of Section 2(d)
Serial No. 75/597,273
12
precludes the registration of a mark where a confusingly
similar mark is already registered even though the
applicant may have prior use. Applicant’s remedy in such a
situation is to seek cancellation of the cited
registration.
Applicant also argues, main brief, 7, 8, that there is
a “presumption that an unopposed mark should not be denied
registration based on likelihood of confusion in the
absence of an opposition to the registration proceeding.”
This argument is not understood. Applicant’s mark herein
sought to be registered has not yet been published for
opposition purposes and there has, therefore, been no
opportunity for an opposition to have been filed by the
owner of the cited registration.
Nor can there be any occasion to suspend this appeal
and remand the application for the introduction of
additional evidence relating to the “highly sophisticated
purchasers” of applicant’s goods, as requested in
applicant’s briefs. That evidence should have been filed
during the prosecution of this application and before
appeal. See Trademark Rule 2.142(d). In any event, a
request for suspension and remand should have been by a
separate paper filed in this case, and not incorporated
into the briefs.
Serial No. 75/597,273
13
Decision: The refusal of registration is affirmed.