PBC Supply, Inc.

Trademark Trial and Appeal Board

Sep 18, 2012

No. 77435787 (T.T.A.B. Sep. 18, 2012)

Mailed:
September 18, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re PBC Supply, Inc.
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Serial No. 77435787
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Gregory C. Smith, Charles C. Garvey, Jr., Seth M. Nehrbass,
and Brett A. North of Garvey, Smith, Nehrbass & North,
L.L.C. for PBC Supply, Inc.

Midge F. Butler, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Quinn, Zervas and Kuczma, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

PBC Supply, Inc. (“applicant”) filed an application
(Serial No. 77435787) to register MEDISLIM (in standard
character form) on the Principal Register for “medically
supervised weight loss and weight reduction program for
patients” in International Class 44. Applicant claims
first use and first use in commerce on March 20, 1989.

THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Ser No. 77435787
2
The examining attorney finally 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 previously registered mark

(MEDSLIM MEDICALLY PRESCRIBED WEIGHT CONTROL RX and design,
Registration No. 2808261), for “clinic services for weight
reduction, diet planning and program supervision,” also in
International Class 44, as to be likely to cause confusion
or mistake or to deceive. Registrant disclaimed MEDICALLY
PRESCRIBED WEIGHT CONTROL and the representations of the
caduceus and prescription symbol (RX).
Applicant appealed the final refusal. Both applicant
and the examining attorney have filed briefs. We affirm
the refusal to register.
Neither the examining attorney nor applicant
introduced any evidence into the record. Our determination
under Trademark Act § 2(d) is therefore based on an
analysis of the essential characteristics of the services
and the differences in the marks. See Federated Foods,
Ser No. 77435787
3
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976); In re E.I. du Pont de Nemours and Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973); and In re Azteca Rest.
Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
A. The Similarity or Dissimilarity and Nature of the
Services as Described in the Application.
In evaluating the relationship of the services, it is
well settled that we must consider the services as they are
identified in the application and registration and we
cannot read limitations into those services that are not
reflected therein. See Octocom Systems Inc. v. Houston
Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed.
Cir. 1987); Hewlett-Packard Co. v. Packard Press Inc., 281
F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). Where the
services are broadly described, and there are no
limitations as to their nature or type, it is presumed that
the scope of the application and registration encompasses
all services of the nature and type described. See In re
Elbaum, 211 USPQ 639 (TTAB 1981), citing Kalart Co., Inc.
v. Camera-Mart, Inc., 119 USPQ 139 (CCPA 1958); see also,
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1813 (Fed. Cir. 1992).
Registrant recites “clinic services for weight
reduction, diet planning and program supervision” and
Ser No. 77435787
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applicant recites “medically supervised weight loss and
weight reduction programs for patients.” Medically
supervised services are provided in clinical settings.
Thus, both registrant’s and applicant’s services concern
medically supervised services. Further, both registrant’s
and applicant’s services concern weight reduction programs
for patients. We therefore find that the services overlap.
In so finding, we reject applicant’s argument that
“Applicant’s services are offered to consumers in a more
structurally defined medical context, and not open to the
general public.” Brief at unnumbered pp. 2-3. Nothing in
registrant’s recitation of services precludes offering
clinical services involving weight control in a
“structurally defined medical context,” and to the members
of the general public. We also reject applicant’s
additional argument that, because applicant’s services are
“medically supervised,” any likelihood of confusion is
reduced because “a potential customer [who] wishes to
obtain Applicant’s Medislim program … cannot simply walk
into a pharmacy and purchase the product.” Applicant’s
argument overlooks that fact that a potential customer may
not consider registrant’s services at a later time if he or
she had a negative experience with applicant’s services,
Ser No. 77435787
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believing that the source of registrant’s services was
applicant.
B. The Similarity or Dissimilarity of the Marks in Their
Entireties as to Appearance, Sound, Connotation and
Commercial Impression.

We next consider the marks. In a likelihood of
confusion analysis, we compare the marks for similarities
and dissimilarities in appearance, sound, connotation and
commercial impression. Palm Bay Imp., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). “[T]he test 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 so that confusion as to the source of the goods
[or services] offered under the respective marks is likely
to result.” H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d
1715, 1727 (TTAB 2008). Because the similarity or
dissimilarity of the marks is determined based on the marks
in their entireties, the analysis cannot be predicated on
dissecting the marks into their various components; that
is, the decision must be based on the entire marks, not
just part of the marks. In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). See also
Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212
Ser No. 77435787
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USPQ 23, 234 (CCPA 1981) (“It is axiomatic that a mark
should not be dissected and considered piecemeal; rather,
it must be considered as a whole in determining likelihood
of confusion”). On the other hand, 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 a
consideration of the marks in their entireties. National
Data Corp., 224 USPQ at 751. (For this reason, applicant’s
argument in its brief that “all of the words in a multi-
word word mark should be given equal weight in the overall
impression of the mark” is wrong.)
Registrant’s mark is composed of MEDSLIM and MEDICALLY
PRESCRIBED WEIGHT CONTROL as well as the representation of
the caduceus and prescription symbol. MEDSLIM is the
dominant feature in registrant’s mark; it is in
substantially larger letters than the other wording in the
mark, and the remaining wording in registrant’s mark is
merely descriptive of registrant’s services. Consumers
will not look to such descriptive wording to distinguish
registrant’s mark from applicant’s mark. Additionally, the
symbols in the mark are descriptive of a feature of
registrant’s services, namely, the medical aspects of
Ser No. 77435787
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registrant’s services, and they too will not be considered
as distinguishing features of registrant’s mark.
Applicant concedes that “both Marks contain a single
word which may be considered similar ….” Brief at
unnumbered p. 2. We agree, and find that MEDISLIM is
substantially similar to the dominant portion of
registrant’s mark. The terms only differ by the addition
of the letter “I” in applicant’s mark, with applicant’s
mark a combination of “MEDI” and SLIM, and registrant’s
mark being a combination of MED and SLIM. Both “medi-” and
“med-” connote “medical,” and the combinations both suggest
a medical approach to controlling weight.
The lettering style of registrant’s mark (which is
rather ordinary) does not distinguish the marks.
Applicant’s mark is for the mark in standard character
form, and therefore registrant is entitled to depictions of
its mark in any font style. See Citigroup Inc. v. Capital
City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253 (Fed.
Cir. 2011).
Because of the similarities between MEDISLIM and
MEDSLIM, differing only by an “I” in the middle of the term
which changes the pronunciation of registrant’s mark only
slightly, and because the additional wording and design
elements in registrant’s mark do not distinguish the marks,
Ser No. 77435787
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we find that the marks, when considered as a whole, are
similar in appearance, sound, meaning and commercial
impression.
C. Conclusion

After careful consideration of the examining
attorney’s and applicant’s arguments, we conclude that
applicant's mark for its services is likely to cause
confusion with registrant’s mark for overlapping services.
Decision: The refusal to register under Trademark Act
§ 2(d) is affirmed.