Orange Brand Services, Ltd.v.Net.Orange, Inc.

Trademark Trial and Appeal Board

Aug 28, 2013

No. 91196931 (T.T.A.B. Aug. 28, 2013)

Hearing: Mailed:
07/25/2013 8/28/2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Orange Brand Services, Ltd.
v.
Net.Orange, Inc.
_____

Opposition No. 91196931
to application Serial No. 77872225
filed on 11/13/2009
_____

Dickerson M. Downing and Honor Costello of Crowell & Moring for
Orange Brand Services, Ltd.

Craig Tadlock of Tadlock Law Firm for Net.Orange, Inc.
______

Before Quinn, Wolfson and Adlin,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Net.Orange, Inc. (“applicant”) filed, on November 13, 2009,
an application to register the mark NET.ORANGE (in standard
characters) for “providing on-line non-downloadable software for
use in planning courses for treatments for patients, for use in
medical billing, medical file and document management, medical
office management, medical cost management, medical
communication management, and medical supply chain management in
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opp. No. 91196931

2

the field of healthcare only for use by pharmacies, hospitals,
medical companies and medical clinics” in International Class
42. Applicant alleges first use of the mark anywhere and first
use of the mark in commerce on October 31, 2006.
Orange Brand Services, Ltd. (“opposer”) opposed
registration under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that applicant’s mark, when used in
connection with applicant’s services, so resembles opposer’s
previously used and registered mark ORANGE (and variations
thereof) for a broad range of telecommunication services and a
variety of computer software services and computer programming
services, including some focusing on healthcare, as to be likely
to cause confusion.1
Applicant, in its answer, denied the salient allegations of
likelihood of confusion.
The record comprises the pleadings; the file of the opposed
application; trial testimony, with related exhibits, taken by
opposer; status and title copies of opposer’s pleaded
registrations and copies of its applications, excerpts from
applicant’s website, and applicant’s responses to certain of

1 Opposer is a subsidiary of France Telecom, a large telecommunications
company, engaged in cellular communications and business-to-business
services. France Telecom, in 2005, decided to make the mark ORANGE
the flagship brand for virtually all of its services. (Marks dep.,
pp. 24-30). In addition, opposer uses slogans such as “Today Changes
With Orange” and “Business Changes With Orange” in connection with
some of its services. Particulars of the registrations are set forth,
infra.
Opp. No. 91196931

3

opposer’s discovery requests, all introduced by way of opposer’s
notices of reliance. Applicant neither took testimony nor
offered any other evidence into the record. The parties filed
briefs and both were represented by counsel at an oral hearing
held before the Board.
STANDING
Opposer established its standing to oppose registration of
the involved application. In particular, opposer properly made
of record its pleaded registrations of its ORANGE marks for a
variety of telecommunication services and computer software-
related services, as well as demonstrated use of its marks in
connection with the same or similar services. Thus, opposer has
shown that it is not a mere intermeddler. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000);
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir.
1999); and Lipton Industries, Inc. v. Ralston Purina Co., 670
F.2d 1024, 213 USPQ 185 (CCPA 1982).
PRIORITY
In view of opposer’s ownership of valid and subsisting
registrations of its various ORANGE marks, opposer’s priority is
not in issue with respect to its services identified in the
Opp. No. 91196931

4

pleaded registrations. King Candy, Inc. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).2
Opposer’s registrations include, in relevant part, the
following registrations, all for the mark ORANGE in standard
characters:3

Reg. No. 2344619, issued April 25, 2000 (renewed), for “mobile
telephone services, data services, namely sending and receiving
facsimiles, electronic mail, voice mail, data collection and
storage, namely, the collection and storage of data in
electronic memory for subsequent viewing or transmission” (in
Int. Cl. 38).

Reg. No. 3204789, issued February 6, 2007 (Section 8 affidavit
accepted), for “data processing; processing of business
information” (in Int. Cl. 35); “electronic data interchange

2 Applicant’s arguments related to priority (Brief, pp. 2-8) raise a
red herring. Moreover, as discussed more fully, infra, many of
opposer’s identified services are broadly worded and encompass such
services of all types; thus, although not specifically identified as
such, the services are presumed to include ones rendered in the
healthcare field for use by medical entities.
3 Opposer’s registrations are based on foreign registrations and
include quite lengthy recitations of services. We have highlighted
those portions of opposer’s recitations that set forth services
closest to applicant’s services, thereby comprising opposer’s
strongest case for its likelihood of confusion claim (as opposer has
done in its Brief, pp. 22-26, and Reply Brief, pp. 5-6). Opposer
reiterated these points at the oral hearing in response to the Board’s
inquiry regarding which registrations and recited services comprised
its strongest case.
Opp. No. 91196931

5

services (in Int. Cl. 38); and “storage, namely the collection
and storage of data in electronic memory for subsequent viewing
or transmission; storage of data and of information” (in Int.
Cl. 39);

Reg. No. 3214415, issued March 6, 2007 (Section 8 affidavit
accepted), for “electronic transmission and reception of data
and of information; electronic data interchange services; video
telephone services; providing user access to the Internet;
computer aided transmission of messages and images; wireless
exchange of computer data” (in Int. Cl. 38); and “database
development services” (in Int. Cl. 42);

Reg. No. 3474323, issued July 29, 2008, for “providing access to
an electronic on-line network for information retrieval” (in
Int. Cl. 38); “installation and maintenance of computer
software; computer programming services for others pertaining to
providing access time to a computer database; computer
programming services for others; information services in the
field of computers and computer network facilities; on-line
computer programming for others; consultation services rendered
on-line or otherwise in conjunction with all of the aforesaid
services given on-line from a computer database” (in Int. Cl.
42); and
Opp. No. 91196931

6

Reg. No. 3492630, issued August 26, 2008, for “computer
services, namely, computer hardware development, customization
of computer hardware and software and provision of information
and advice thereon; maintenance, updating and design of computer
firmware, computer software and computer programs; computer
programming services; technical advice and consultation services
in the field of information technology; computer management
services, namely, computer project management, software
application management, namely, hosting computer software
applications for others, managing and maintaining applications,
software, websites, and databases in the fields of wired and
wireless communication; on-line computer services, namely,
design and development of on-line computer software systems,
hosting of digital content on the Internet, providing specific
information as requested by customers via the Internet; computer
programming services for others provided on-line; computer
network services, namely, providing search engines for obtaining
data on a global computer network and provision of information
and advice thereon; creating, operating and maintaining
databases, intranets and websites; installation and maintenance
of computer software; providing an on-line computer database in
the field of computer software development and programming;
computer network services, namely, providing search engines for
obtaining data on a global network, hosting the websites of
Opp. No. 91196931

7

others on a computer server for a global computer network;
creating, operating and maintaining websites, web pages and
portals for others for logging text, images and music provided
via computers and mobile telephones; information and advisory
services, namely, providing information at the specific request
of end users from a computer database or via the Internet by
means of a global computer network” (in Int. Cl. 42).

Opposer also owns other valid and subsisting registrations
of ORANGE marks (properly made of record), including ORANGE with
an orange colored background, ORANGE LABS (LABS disclaimed) and
ORANGE BUSINESS SERVICES (BUSINESS SERVICES disclaimed), all for
services identical or similar to the ones referenced above.
LIKELIHOOD OF CONFUSION
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue. In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). Opposer must establish that there is a likelihood
of confusion by a preponderance of the evidence. In any
likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the
similarities between the goods and/or services. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
Opp. No. 91196931

8

(CCPA 1976). These factors, and the other relevant du Pont
factors in the proceeding now before us, are discussed below.
THE MARKS
We must compare opposer’s mark ORANGE in standard
characters to applicant’s mark NET.ORANGE in standard
characters.4 The marks are compared in their entireties as to
appearance, sound, connotation and commercial impression to
determine the similarity or dissimilarity between them. Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005). The
test, under the first du Pont factor, is not whether the marks
can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression that
confusion as to the source of the goods and/or services offered
under the respective marks is likely to result. It is not
necessary for the marks to be identical in order for a
likelihood of confusion to exist: “Exact identity is not
necessary to generate confusion as to source of similarly-
marketed products.” Bridgestone Americas Tire Operations, LLC

4 Applicant’s argument based on its actual use, that is, use of
NET.ORANGE with an orange fruit design, is misplaced inasmuch as the
design does not form part of the mark sought to be registered. See
Chesebrough-Pond’s Inc. v. Soulful Days, Inc., 228 USPQ 954, 956 (TTAB
1985); and Ft. Howard Paper Co. v. Marcal Paper Mills, Inc., 189 USPQ
305, 307 (TTAB 1975). Thus, applicant’s actual use is essentially
irrelevant to our comparison of the parties’ marks set forth in
opposer’s pleaded registrations and applicant’s involved application.
Opp. No. 91196931

9

v. Federal Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed.
Cir. 2012). In that opinion, the Court went on to observe that
in the earlier case of Bose Corp. v. QSC Audio Prods., Inc., 293
F.3d 1367, 63 USPQ2d 1303, 1311 (Fed Cir. 2002), in comparing
the marks WAVE and ACOUSTIC WAVE to POWERWAVE, “this court found
that the ‘presence of the root element WAVE....introduces a
strong similarity in all three marks,’ although in that case the
goods were not identical.” Id.
It is well settled that one feature of a mark may be more
significant than another, and it is not improper to give more
weight to this dominant feature in determining the commercial
impression created by the mark. In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“There is nothing
improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on consideration of the
marks in their entireties.”). Applicant’s mark is dominated by
the word ORANGE. The NET. portion is subordinate; as pointed
out by opposer, the term NET is a shortened form of “network.”
The “dot” in applicant’s mark serves to isolate and further
highlight the dominant portion ORANGE. The dominant portion,
ORANGE, of applicant’s mark is identical to the entirety of
opposer’s mark ORANGE in sound, appearance and meaning. In
focusing on the dominant portion of applicant’s mark, we
Opp. No. 91196931

10

recognize, of course, that the marks ultimately must be compared
in their entireties, including the NET. portion of applicant’s
mark. When this comparison is made, we find that the marks are
similar in sound, appearance and meaning. Simply put, the
addition of NET. in applicant’s mark is insufficient to
distinguish applicant’s mark NET.ORANGE from opposer’s mark
ORANGE, and may suggest to consumers that applicant’s services
are in fact provided by opposer via a computer network. Because
of the similarities between the marks in their entireties, the
marks engender similar overall commercial impressions. See,
e.g., In re Computer Sys. Ctr. Inc., 5 USPQ2d 1378, 1381 (TTAB
1987) (holding CSC ADVANCED BUSINESS SYSTEMS for retail computer
store services and computer maintenance and repair services in
connection therewith, and CSC for various computer-related
services, likely to cause confusion, noting that “the inclusion
of ‘ADVANCED BUSINESS SYSTEMS’ as a feature of applicant’s mark
is not likely to help customers .... distinguish the source of
each party’s service”); and In re Equitable Bancorporation, 229
USPQ 709, 711 (TTAB 1986) (holding RESPONSE and RESPONSE CARD
(CARD disclaimed), both for banking services, likely to cause
confusion, noting that “the addition of descriptive matter to
one of two otherwise similar, nondescriptive marks will not
serve to avoid a likelihood of confusion”).
Opp. No. 91196931

11

Applicant’s argument that opposer has never adopted a mark
containing any words or features in front of the word “ORANGE,”
as applicant has done, is hardly persuasive. There is no
evidence that consumers are aware of opposer’s alleged practice,
and the commonality of the arbitrary and distinctive word ORANGE
in the marks far outweighs the differences between them.
The similarity between the marks ORANGE and NET.ORANGE
weighs in favor of a finding of likelihood of confusion.
FAME
Opposer claims that its ORANGE mark “is famous worldwide
and also has achieved a degree of fame in this country.”
(Brief, p. 42).
Fame of the prior mark plays a dominant role in likelihood
of confusion cases featuring a famous mark. Bose Corp. v. QSC
Audio Products Inc., 63 USPQ2d 1303; Recot Inc. v. M.C. Becton,
214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000); and Kenner
Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22
USPQ2d 1453 (Fed. Cir. 1992). Because of the extreme deference
accorded to a famous mark in terms of the wide latitude of legal
protection it receives, and the dominant role fame plays in the
likelihood of confusion analysis, it is the duty of the party
asserting fame to clearly prove it. Lacoste Alligator S.A. v.
Maxoly Inc., 91 USPQ2d 1594, 1597 (TTAB 2009); and Leading
Opp. No. 91196931

12

Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904
(TTAB 2007).
Opposer’s ORANGE mark has been ranked as the 36th most
valuable brand in the world. The record is silent, however,
regarding the level of revenues opposer enjoys in the United
States. Further, although opposer disclosed its advertising
expenditures in North America, the figures do not show the
amount specifically spent in the United States.
Based on the record, we find that the evidence falls well
short of proving fame of the mark ORANGE in the United States as
contemplated by caselaw. We can say, however, that opposer’s
mark ORANGE is arbitrary, strong and distinctive. In this
connection, we also note that the record is devoid of any
evidence of third-party uses or registrations of the same or
similar mark.
THE SERVICES
We next turn to consider the second du Pont factor
regarding the similarity/dissimilarity between the goods and/or
services. Contrary to the gist of some of applicant’s
arguments, it is well settled that the services of the parties
need not be identical or competitive, or even offered through
the same channels of trade, to support a holding of likelihood
of confusion. It is sufficient that the respective services of
the parties are related in some manner, and/or that the
Opp. No. 91196931

13

conditions and activities surrounding the marketing of the
services are such that they would or could be encountered by the
same persons under circumstances that could, because of the
similarity of the marks, give rise to the mistaken belief that
they originate from the same source. See Edwards Lifesciences
Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010); and
Hilson Research, Inc. v. Society for Human Resource Management,
27 USPQ2d 1423 (TTAB 1993). The issue, of course, is not
whether purchasers would confuse the services, but rather
whether there is a likelihood of confusion as to the source of
the services. In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
Importantly for this case, it is sufficient if likelihood of
confusion is found with respect to use of the mark on any item
that comes within the recitation of services in an application
or registration. Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); and Rocket
Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1073 (TTAB
2011).
We make our determination regarding the similarities
between the parties’ services, channels of trade and classes of
purchasers based on the services as they are identified in the
application and registrations, respectively. Octocom Systems
Inc. v. Houston Computers Services, Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990); and Canadian Imperial Bank
Opp. No. 91196931

14

v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir.
1992). Because there are no limitations as to channels of trade
or classes of purchasers in the recitations of most of the
services in the pleaded registrations, it is presumed that
opposer’s services move in all channels of trade normal for
those services, and that they are available to all classes of
purchasers for those services. See Paula Payne Products Co. v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973);
Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139
(CCPA 1958); and In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB
1992).
Applicant’s recitation of services reads as follows:
“providing on-line non-downloadable software for use in planning
courses for treatments for patients, for use in medical billing,
medical file and document management, medical office management,
medical cost management, medical communication management, and
medical supply chain management in the field of healthcare only
for use by pharmacies, hospitals, medical companies and medical
clinics.”
Opposer’s recitations of services include the following
services: “providing access to an electronic on-line network
for information retrieval; installation and maintenance of
computer software; computer programming services for others;
information services in the field of computers and computer
Opp. No. 91196931

15

network facilities; on-line computer programming for others;
customization of computer software; maintenance, updating and
design of computer firmware, computer software and computer
programs; on-line computer services, namely, design and
development of on-line computer software systems, hosting of
digital content on the Internet, providing specific information
as requested by customers via the Internet; database development
services; storage, namely the collection and storage of data in
electronic memory for subsequent viewing or transmission;
storage of data and of information; creating, operating and
maintaining databases, intranets and websites; installation and
maintenance of computer software; electronic transmission and
reception of data and information; electronic data interexchange
services; and database development services.”
Opposer’s services referenced above are broadly worded and
do not include any limitations as to the industry or types of
customers being served. Thus, the services as identified in
opposer’s registrations are presumed to encompass those types of
services rendered in the healthcare field to medical entities;
that is, as there are no limitations as to the industry being
served or the application of the services to any particular
customers, such services logically include the healthcare field.
In any event, the record shows that opposer has rendered
services to the healthcare industry, a recent example focusing
Opp. No. 91196931

16

on remote patient monitoring. (Marks dep., pp. 120-121; Helkov
dep., pp. 18-24).
Applicant goes so far as to make the following statements:
“At the very broadest level, it appears that [the parties] both
offer products and services in the healthcare field. However, a
closer examination of the evidence suggests that the products
and services actually provided by [the parties] are actually
different in a meaningful way, and that those products and
services are actually complementary rather than competitive with
one another.” (Brief, p. 17). Applicant goes on to reiterate
that the services “would be far more complementary than
competitive,” and further states that the services “are in
related areas that could provide synergies to one another,”
while also asserting that the services are “generally
dissimilar.” (Brief, p. 19). At oral hearing applicant again
conceded that the parties’ services are “complementary.”
Applicant’s observations about “complementary” services are
contemplated by caselaw when making likelihood of confusion
determinations, inasmuch as complementary and/or conjoint use
may weigh in favor of a finding of likelihood of confusion. See
Octocom Systems Inc. v. Houston Computers Services, Inc., 16
USPQ2d at 1788 (modems and computer programs are commonly used
together in networking). See also In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir.
Opp. No. 91196931

17

1984); and Sholl Dental Lab. Co. v. McKesson & Robbins, Inc.,
150 F.2d 718, 66 USPQ 223, 226 (CCPA 1945). The point is that
opposer’s services, namely software and information technology
services, whether rendered in the healthcare field or not, are,
at the very least, related to applicant’s services.
The similarity between the services is a factor that weighs
in favor of a finding of likelihood of confusion.
TRADE CHANNELS and PURCHASERS
We recognize that applicant’s recitation of services is
limited to the “field of healthcare only for use by pharmacies,
hospitals, medical companies and medical clinics.” Opposer’s
recitations of services do not include any limitations and, as
noted above, we presume that its services move in all trade
channels normal for those services. When so considered, we find
that the trade channels for the services, and the customers for
those services, overlap in at least the healthcare field. See
Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1897
(TTAB 2006). Further, opposer’s customers include some in the
medical industry, including Merck (pharmaceuticals), Sorin Group
(medical devices) and Gerber Scientific (devices for
manufacturing lenses). (Marks dep., pp. 191-192; Helkov dep.,
pp. 84-85).
These factors weigh in favor of a finding of likelihood of
confusion.
Opp. No. 91196931

18

SOPHISTICATION OF PURCHASERS
Applicant contends that the services are bought by
sophisticated purchasers, as evidenced by the nature and cost of
its services, and expertise of its clientele. First, applicant
did not introduce probative evidence to support its proposition.
Second, even assuming arguendo that a careful selection is
involved, it is settled that even sophisticated purchasers are
not immune from source confusion, especially in cases such as
the instant one involving similar marks and related services.
See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986), citing Carlisle Chemical Works, Inc. v.
Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA
1970) (“Human memories even of discriminating purchasers...are
not infallible.”). See also In re Decombe, 9 USPQ2d 1812 (TTAB
1988). We find that the similarity between the marks and the
close relationship between the services sold thereunder outweigh
any presumed sophisticated purchasing decision. See HRL
Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB
1989), aff’d, Weiss Associates, Inc. v. HRL Associates, Inc.,
902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of
goods and marks outweigh sophisticated purchasers, careful
purchasing decision, and expensive goods).
This factor is neutral.

Opp. No. 91196931

19

ACTUAL CONFUSION
Opposer offered no evidence of any actual confusion and, in
fact, the parties are not aware of any actual confusion between
the marks, despite approximately six years of contemporaneous
use. Although we have carefully considered this factor in the
context of the parties’ contemporaneous use of their respective
marks, the absence of evidence of actual confusion is not
dispositive in this case. The record is devoid of evidence to
establish that the parties’ use of their respective marks has
been at such a level that there have been meaningful
opportunities for actual confusion to have occurred among
purchasers. Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1202
(TTAB 2007). Thus, we are unable to effectively gauge this
factor. A showing of actual confusion would of course be highly
probative, if not conclusive, of a likelihood of confusion. The
opposite is not true, however. The lack of evidence of actual
confusion carries little weight. J.C. Hall Co. v. Hallmark
Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965). In
short, proof of actual confusion is not necessary to establish
likelihood of confusion. Giant Food, Inc. v. Nation’s
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir.
1983).
Accordingly, the eighth du Pont factor of the length of
time during and conditions under which there has been
Opp. No. 91196931

20

contemporaneous use without evidence of actual confusion is
considered neutral.
CONCLUSION
We find that the du Pont factors, on balance, weigh in
favor of a finding of likelihood of confusion. The similarities
between the marks and the services sold thereunder, and the
presumed overlap in trade channels, purchasers and conditions of
sale, cumulatively outweigh any differences between the marks
and services.
We conclude, based on the preponderance of the evidence,
that purchasers familiar with opposer’s wide variety of computer
software and telecommunications-related services rendered under
the mark ORANGE would be likely to mistakenly believe, upon
encountering applicant’s mark NET.ORANGE for “providing on-line
non-downloadable software for use in planning courses for
treatments for patients, for use in medical billing, medical
file and document management, medical office management, medical
cost management, medical communication management, and medical
supply chain management in the field of healthcare only for use
by pharmacies, hospitals, medical companies and medical
clinics”, that the services originated with or are somehow
associated with or sponsored by the same entity.
Lastly, “there is a heavy burden on the newcomer to avoid
consumer confusion as to products and their source.”
Opp. No. 91196931

21

Bridgestone Americas Tire Operations, LLC v. Federal Corp., 102
USPQ2d at 1065.5 To the extent that any of the points argued by
applicant raises a doubt about our finding of a likelihood of
confusion, we resolve that doubt, as we must, in favor of
opposer as the prior user and registrant. See Giant Food, Inc.
v. Nation’s Foodservice, Inc., 218 USPQ at 395; and Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1707 (Fed. Cir. 1992).
DECISION
The opposition grounded on likelihood of confusion is
sustained; and registration to applicant is refused.

5 So as to be clear, however, we do not find, contrary to opposer’s
argument, any bad faith adoption by applicant.