PerkinElmer Health Sciences, Inc.v.Atlas Database Software Corp.

Trademark Trial and Appeal Board

Dec 22, 2011

No. 92046554 (T.T.A.B. Dec. 22, 2011)

Hearing: Mailed:
5/10/11 12/22/11

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

PerkinElmer Health Sciences, Inc.
v.
Atlas Database Software Corp.
_____

Cancellation No. 92046554
_____

I. Stephen Samuels of Samuels & Hiebert for PerkinElmer
Health Sciences, Inc.

Christopher J. McHattie of The McHattie Law Firm for Atlas
Database Software Corp.
_____

Before Quinn, Taylor and Ritchie,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

PerkinElmer Health Sciences, Inc. (“petitioner”) filed
a petition to cancel a registration owned by Atlas Database
Software Corp. (“respondent”) of the mark LABWORKS (in typed
form) for “computer software and manuals therefore [sic] for
use in connection with medical records, patient information,
clinical histories, clinical task workflow, radiology and
laboratory test ordering and results reporting, and
providing remote access to the foregoing between users” (in
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Cancellation No. 92046554
2
International Class 9); and “application service provider
featuring software for use in connection with medical
records, patient information, clinical histories, clinical
task workflow, radiology and laboratory test ordering and
results reporting, and providing remote access to the
foregoing between users; computer software consultation,
design for others and development” (in International Class
42).1 As grounds for cancellation, petitioner alleges that
respondent’s mark, when used in connection with respondent’s
goods and/or services, so resembles petitioner’s previously
used mark LABWORKS for computer software for laboratory
information management, namely software for maintaining and
managing a database of information pertaining to laboratory
procedures, for planning, scheduling, tracking and
evaluating laboratory events and procedures, for maintaining
records of laboratory procedure data, for reporting
information about the status and results of laboratory
procedures, and for the transfer of data to and from
laboratory instruments; and for computer software
consultation, design and development for others, as to be
likely to cause confusion under Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d).

1 Registration No. 2833981, issued April 20, 2004; Section 8
affidavit accepted.
Cancellation No. 92046554
3
Respondent, in its answer, denied the salient
allegations of likelihood of confusion. Respondent also
asserted several affirmative defenses, including laches.
Evidentiary Objections
Petitioner raised more than two dozen separate
objections, covering nine pages of argument. Respondent,
for its part, raised close to four dozen separate
objections, covering fifteen pages of argument. Many of the
parties’ objections relate to admissibility (e.g., hearsay),
while others relate to relevance and probative value.
The evidentiary record in this case is voluminous, with
over one thousand pages of testimony, and hundreds of
exhibits. This has been a vigorously litigated proceeding.
We have read and considered the entire record in making our
decision, according the testimony and other evidence
whatever probative value it merits.
Most of petitioner’s objections are grounded on
hearsay. Suffice it to say that, in reading the record, we
have kept in mind the hearsay nature of some of respondent’s
evidence; in those cases, we have not considered the
evidence to prove the truth of the matter asserted in the
objected-to exhibits, but rather for the effect it would
have on the relevant public. To the extent that any of
respondent’s testimony was not based on personal knowledge,
but appeared to be somewhat speculative, we have considered
Cancellation No. 92046554
4
petitioner’s objections in giving the testimony its
appropriate probative value.
Insofar as respondent’s objections are concerned, we
have considered petitioner’s testimony and evidence
regarding events continuing on after respondent’s date of
first use so, to that extent, respondent’s objection thereto
is overruled. Many of respondent’s other objections are
based on hearsay, and we have considered the evidence not
for the truth of the matter asserted in the objected-to
exhibits, but rather for the effect it would have on the
relevant public. We also have considered respondent’s
objections grounded on lack of personal knowledge, lack of
foundation and/or lack of authentication and, when
appropriate, have weighed the evidence in light of the
objections.
Suffice it to say that none of the respective party’s
objected-to evidence is outcome determinative, either if
considered individually or collectively. Therefore, we see
no reason to belabor this opinion with a detailed discussion
of them. In sum, we have considered the entire record with
an eye on the parties’ objections, and accorded the evidence
whatever probative weight it merits.
The Record
The record consists of the file of the involved
registration; the pleadings; trial testimony, with related
Cancellation No. 92046554
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exhibits, taken by each party; a certified copy of
petitioner’s pending application, official records of the
state of Delaware, third-party registrations, and
respondent’s responses to certain of petitioner’s
interrogatories, all introduced by way of petitioner’s
notice of reliance; and third-party registrations,
petitioner’s responses to certain of respondent’s
interrogatories and request for admissions, respondent’s own
responses to certain of petitioner’s interrogatories, as
provided by Trademark Rule 2.120(j)(5), and excerpts of
printed publications, all made of record by way of
respondent’s notices of reliance. Both parties filed
briefs, and both were represented by counsel at an oral
hearing.
The Parties
Michael Epton, founder of petitioner’s original
predecessor in interest, worked for the New Orleans Health
Department as a chemist, before being employed by the Sewage
and Water Board of New Orleans in various positions,
including as a chemist and a water purification supervisor-
laboratory director. In the mid-1980’s, Mr. Epton began
developing software to automate the control and management
of laboratory instruments used in environmental laboratories
dealing with sewage and water facilities. This type of
software is categorized as a “laboratory information
Cancellation No. 92046554
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management system,” commonly referred to by the generic
acronym “LIMS,” which functions to manage the flow of
samples through a laboratory, to control the interfacing of
laboratory instruments, and to generate results from the raw
data. Prior to the automation afforded by this type of
software, a laboratory would order tests on paper, raw data
from instruments would be recorded by hand in notebooks,
calculations would be made by hand, and results would be
reported in writing or by phone.
Petitioner’s LABWORKS software was first used in
environmental labs because those were the ones most familiar
to Mr. Epton:
During the time period 1986 to 1995, did
AAS [a predecessor of petitioner]
actively try to market its LABWORKS
software program to hospital or medical
or clinical testing labs?

Not to my knowledge.

Why was that?

We had many customers that were familiar
to us. We were selling our products to
– over time, you know, our customer base
was growing. We never ruled out selling
anything to anybody. But the medical
and clinical customers were not
familiar. And we had plenty of
business. We were growing rapidly. We
sold to the people we were familiar
with. It was a business decision.
(Epton dep. II, p. 10).

Cancellation No. 92046554
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Mr. Epton went on to explain that he never made calls or
completed any sales to clinical laboratories2:
I think it was a business decision made
by AAS to – well, we had lots of
customers, customers that we were
familiar with, customers who had made us
aware of the feature sets that were
relevant to their business. And we were
selling software. We were growing our
business. We had plenty of work. And
so we made a business decision to sell
to the customers we were familiar with.
We never ruled out any particular kind
of customer, that I know of.
(Epton dep. II, pp. 126-27).

Michael Lehtola, one of petitioner’s salespersons, confirmed
that petitioner’s core markets are environmental water and
waste water plant laboratories, and process control
laboratories. Although some of petitioner’s competitors may
have licensed their LIMS software to clinical and medical
laboratories, petitioner never did. (Lehtola dep. I, p.
29). Further, Mr. Lehtola is unaware of any sales by
petitioner to medical laboratories. (Lehtola dep. II, p.
33). According to Mr. Lehtola, all LIMS software have
similar functions, no matter the type of laboratory in which
the software is used. (Lehtola dep. I, p. 65). “My
software provided features that would provide a lab to log
in samples, order tests on those samples, enter results
against those tests, and prepare and produce reports.”

2 A clinical laboratory analyzes “samples of materials from
patients in relation to [the] practice of medicine.” (Epton dep.
II, p. 72).
Cancellation No. 92046554
8
(Lehtola dep. I, p. 239). Insofar as testing ordering and
reporting is concerned, since 1998, petitioner provided
remote access to the ordering and results reporting between
users. (Lehtola dep. I, p. 241).
Respondent is essentially in the business of the
development and sale of software used to connect medical
reference laboratories to physicians, thereby allowing
doctors or other clinicians to order medical tests from a
lab and receive results electronically. Respondent realized
that two major medical laboratories, Quest and LabCorp, were
offering software to physicians so that the physicians could
easily order tests from those labs. As explained by Robert
Gregory, respondent’s senior vice president of corporate
strategy, respondent developed its software in the mid-
1990’s to assist other medical reference laboratories in the
sale of their services to doctors and hospitals in the
community by automating the entry of test orders and the
return of individual patient test results to those
physicians and hospitals. (Gregory dep., pp. 294-95). Mr.
Gregory then identified a target audience comprising
hospitals with their own medical labs; “hospital outreach”
occurs when hospitals sell their medical testing services to
physicians outside of the hospital setting by using the
extra capacity contained within the hospitals’ own medical
laboratories. Respondent marketed its connectivity software
Cancellation No. 92046554
9
to hospitals and other commercial medical testing
laboratories as a way for them to compete with Quest and
LabCorp labs. (Gregory dep., pp. 93-96). Respondent’s
software, which facilitates electronic order entry and the
delivery of test results, is functional only in the medical
lab environment. (Gregory dep., p. 113). Respondent’s
customers include Cleveland Clinic, University of Virginia
Medical Center, Vanderbilt University Medical Center and
Mayo Clinic. (Gregory dep., p. 224).
Prior to the events leading up to this proceeding (as
discussed infra), the parties were entirely unaware of one
another and the use of the other’s mark.
Standing
Petitioner has demonstrated its standing to bring this
cancellation proceeding against the involved registration.
In particular, petitioner’s application Serial No. 78579196,
filed March 3, 2005, to register the mark LABWORKS, was
refused registration under Section 2(d) on the basis of
respondent’s Registration No. 2833981 sought to be cancelled
in this proceeding. Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
Further, petitioner has shown use of its mark LABWORKS, and
that it is not a mere intermeddler. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000);
Cancellation No. 92046554
10
and Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed.
Cir. 1999).
Priority
As an initial matter, respondent raises the issue that
petitioner is not the owner of the mark. We will spend
little time on this red herring, given Mr. Epton’s clear and
unambiguous testimony (with supporting documents) about the
adoption of the mark LABWORKS and the chain of title of the
mark. Mr. Epton and his wife formed Automated Systems
Design, Inc. (“ASD”) in 1985, and adopted the mark LABWORKS.
In 1988, ASD transferred all of its assets, including the
mark LABWORKS, to Analytical Automation Specialists, Inc.
(“AAS”). In 2001, AAS merged into PerkinElmer LIMS, Inc.,
and the corporate name was changed to PerkinElmer Labworks,
Inc. This entity merged in 2004 into PerkinElmer LAS, Inc.,
and in 2008, the corporate name was changed to PerkinElmer
Health Services, Inc., which is the named petitioner.
Based on the record, we find that petitioner’s
ownership of the mark LABWORKS, through use by predecessors
in interest, has been unbroken since the mark was adopted.
As to priority, respondent has established March 1,
1996 as the date for its first use of the mark LABWORKS in
connection with its goods and services. Thus, in order to
establish priority, petitioner must prove an earlier date of
first use.
Cancellation No. 92046554
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Respondent essentially contends that each party has
priority in its own respective areas of use: “both
Registrant and Petitioner have an assertable right of
priority in connection with their own specific niche of
use.” (Brief, p. 21). “In 1996, AAS [petitioner’s
predecessor in interest] was not likely to expand its use to
include the uses made by Registrant.” (Brief, p. 22).
To establish priority, petitioner is relying on its
common law rights as shown by its actual use in connection
with computer software and related services.
Mr. Epton testified that he created petitioner’s
LABWORKS software during 1985-86. The first sale and
shipment of the software under the mark occurred on February
14, 1986; the first customer was O.H. Materials, an
environmental engineering company engaged in the testing of
soil samples and samples of water and hazardous waste for
chemicals and contaminants that could impact human health.
(Epton dep. I, pp. 35-40). Petitioner installed the
software and configured it, in consultation with the
customer’s professionals, so that petitioner’s software met
the needs of the customer’s testing laboratory. Mr. Epton’s
personal lab book lists the various sales of the software in
every year through May, 1998. Mr. Epton, in his testimony,
chronicled a long list of petitioner’s customers, namely
environmental governmental laboratories testing various
Cancellation No. 92046554
12
water and soil samples for contaminants posing a threat to
human health. Given Mr. Epton’s work experience with the
City of New Orleans in the area of water and waste water, it
is not surprising that through the years most of
petitioner’s customers have been environmental laboratories,
testing water and waste water. As indicated earlier, “we
[petitioner] made a business decision to sell to the
customers we were familiar with.”
As petitioner’s business grew, other types of
industrial laboratories utilized petitioner’s software.
Petitioner has identified seven major industries for
customers for its software: water and wastewater; process
control; power generation; environmental; forensics; food
and beverage; and public (local, state and federal
governments) health departments. (Lehtola dep. I, p. 123;
ex. P-121).3
Based on the record before us (including the specific
wording of the identification of goods in petitioner’s
application), we find, for purposes of this proceeding, that
petitioner has established the following prior rights based
on its common law use:
Computer software for laboratory
information management, namely software
for maintaining and managing a database
of information pertaining to laboratory
procedures, for planning, scheduling,

3 Except in one instance (see infra), these public health
departments tested environmental samples such as water and soil.
Cancellation No. 92046554
13
tracking and evaluating laboratory
events and procedures, for maintaining
records of laboratory procedure data,
for reporting information about the
status and results of laboratory
procedures, and for the transfer of data
to and from laboratory instruments in
the fields of environmental, water and
waste water, utilities, process control,
forensics, food and beverage, and
agriculture; and

Computer software consultation, design
and development for laboratories in the
fields of environmental, water and waste
water, utilities, process control,
forensics, food and beverage, and
agriculture.

In each software application petitioner’s goods have been
used by laboratories in testing samples for contaminants
that may impact human health.
We do not see the need to discuss respondent’s remarks
directed to the doctrine of natural expansion. (Brief, pp.
22-29). See Electronic Data Systems Corp. v. EDSA Micro
Corp., 23 USPQ 1460 (TTAB 1992). Petitioner did not rely on
the doctrine in its discussion of the issues; further,
respondent states that “there is no evidence of record to
indicate that Petitioner, even today markets this type of
software [connectivity software for use by medical testing
laboratories].” (Brief, p. 24). We agree with this
assessment and, thus, see no need to resort to natural
Cancellation No. 92046554
14
expansion when considering the similarity between the
goods.4
As to petitioner’s services, respondent goes so far as
to contend that petitioner has failed to establish common
law rights for any services. Respondent argues that any
services “were rendered under the AAS brand in connection
with modifying the LABWORKS brands product,” essentially
concluding that petitioner either lacks common law rights
for services, or that any such rights did not accrue until
after respondent’s first use. (Brief, p. 38).
Contrary to respondent’s contention, the record
supports petitioner’s claim of use of its mark LABWORKS in
connection with its services since at least as early as
1995. Mr. Epton testified that petitioner’s software was
usually configured to best fit the operations of a
particular laboratory situation. In addition, petitioner
must integrate its software with other software that the

4 In saying this, we note the absence of probative evidence to
show that in 1996, when respondent first used its mark, the type
of petitioner’s software used in environmental labs would
naturally expand to use in medical labs. See Electronic Data
Systems Corp. v. EDSA Micro Corp., 23 USPQ2d at 1463-64 (“Before
the doctrine of natural expansion may be invoked by [the
plaintiff], it must be shown that the new goods, i.e., the
extension of the line of business from that which pre-existed
[the defendant’s] arrival, evolved from the manufacturing and
marketing activities of [the plaintiff] and did not result from
the acquisition of a new business by a diversifying company.”).
We recognize that some of petitioner’s competitors may have sold
their LIMS software to clinical laboratories in later years; but,
as is readily apparent from this record, petitioner itself has
not expanded its use to clinical laboratories.
Cancellation No. 92046554
15
customer already was using:
[I]n most cases, it has to do with
integrating to other software that
customers may be using, such as for
tracking and manufacturing processes, or
it could be financial software. You
know, many organizations have an overall
organizational computing environment, of
which LABWORKS is one part. And
integrating with the rest of that
usually involved having to perform
consulting roles to determine what needs
to be done, what options exist for doing
it, and then to negotiate and agree upon
a plan and a price to do it.

Mr. Epton went on to indicate that petitioner’s services
“sometimes involve creating software modification,” and that
“the computer software consultation, design for others and
development services” were rendered in 1995 and 1996 by AAS,
one of petitioner’s predecessors in interest. (Epton dep.
II, pp. 40-41).
Mr. Epton’s testimony is clear and unambiguous
regarding this use. Oral testimony, even of a single
witness, if “sufficiently probative,” may be enough to prove
priority. Powermatics, Inc. v. Glebe Roofing Products Co.,
341 F.2d 127, 144 USPQ 430 (CCPA 1965); and 4U Co. of
America, Inc. v. Naas Foods, Inc., 175 USPQ 251 (TTAB 1972).
In the present case, Mr. Epton’s testimony is not
“characterized by contradictions, inconsistencies and
indefiniteness,” but rather carries with it “conviction of
its accuracy and applicability.” B.R. Baker Co. v. Lebow
Bros., 150 F.2d 580, 66 USPQ 232 (CCPA 1945). Further, the
Cancellation No. 92046554
16
oral testimony is buttressed by documentary evidence; a
booklet on AAS’s goods and services states, for example,
that “[w]e can help you with network definition, hardware
acquisition, installation, configuration, training and
support,” and “[i]f other software is required, we provide
the professional analysis and programming resources.” (Ex.
P-74). See Elder Mfg. Co. v. International Shoe Co., 194
F.2d 114, 92 USPQ 330 (CCPA 1952).
Accordingly, we find priority, based on common law
rights, in favor of petitioner on the specific goods and
services identified 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). Petitioner has the burden to
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. Ft.
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
These factors, and the other relevant du Pont factors in the
Cancellation No. 92046554
17
proceeding now before us, will be discussed in this
decision.
Petitioner contends that the marks are identical, and
that the goods and/or services are closely related,
concluding that “the evidence shows that almost all of the
relevant DuPont factors favor or strongly favor Petitioner
PerkinElmer.” (Brief, p. 54).
Respondent’s position may be summarized as follows:
Petitioner and Registrant have each used
the LABWORKS mark for over 14 years in
their respective industries without even
being aware of each other and without
even a hint of actual confusion or a
likelihood of confusion. Indeed, before
the Office action in issue, neither
party knew that the other even used the
LABWORKS mark in connection with its
software. This “dispute” only exists
because Petitioner overreached with its
identification of its goods during the
prosecution of its trademark application
to register its use of the LABWORKS mark
and then refused to acknowledge that its
only plausible claim to the LABWORKS
mark is in the “industrial” LIMS
marketplace. (Brief, p. 10).

*****

The reality is that both the goods of
Petitioner and the goods of Registrant
are software for use with computer
hardware that functions in a laboratory
environment but after that gross
similarity, the similarity ends. The
type of laboratory is different. The
functions are different. The purposes
are different. The customers are
different. (Brief, p. 16).

Cancellation No. 92046554
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According to respondent, the parties’ goods “solve two
completely different problems.” (Brief, p. 19). While the
parties both market software products related to
laboratories, these laboratories “perform completely
different functions in completely different marketplaces.”
(Brief, p. 31).
As one of the starting points of our likelihood of
confusion analysis, it is instructive to look to the
guidelines set forth in TMEP §1402.03(d) (8th ed. 2011)
regarding identifying computer programs with specificity.
The section states in relevant part:
Any identification of goods for computer
programs must be sufficiently specific
to permit determinations with respect to
likelihood of confusion. The purpose of
requiring specificity in identifying
computer programs is to avoid the
issuance of unnecessary refusals of
registration under [Section 2(d)] where
the actual goods of the parties are not
related and there is no conflict in the
marketplace...Due to the proliferation
and degree of specialization of computer
programs, broad specifications...will
not be accepted, unless the particular
function or purpose of the program in
that field is indicated...Generally, an
identification for “computer software”
will be acceptable as long as both the
function/purpose and the field are set
forth. (emphasis added).

In the present case, petitioner’s identification of its
goods in its application indicates the software’s
function/purpose as used in laboratories. The
Cancellation No. 92046554
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identification does not specify, however, the fields of
industry in which the laboratories operate. This situation
is contrasted with respondent’s identification, which
includes terminology indicating that the software is for use
in the medical/clinical field.
After review of the extensive record, and the comments
made in response to questions at the oral hearing, the
Board, quite frankly, cannot help but wonder if this case
could have been settled with some tweaking of the respective
identifications of goods/services in petitioner’s
application and respondent’s registration.5 Such action, we
believe, might have gone a long way in convincing the
examining attorney that the contemporaneous registration of
the marks was appropriate. Be that as it may, we are tasked
with deciding, based on the record before us, the issue of
likelihood of confusion; we now turn to the du Pont
analysis.
The Marks
Petitioner’s mark LABWORKS and respondent’s mark
LABWORKS are identical in every respect, namely in sound,

5 In narrowing petitioner’s common law rights in this proceeding
to software for use in laboratories in the fields of
environmental, water and waste water, utilities, process control,
forensics, food and beverage, and agriculture, we do not mean to
suggest that this would be the only acceptable identification
that might convince the examining attorney to withdraw the
refusal. It may well be that the examining attorney would be
persuaded to withdraw the refusal if, as respondent suggests,
petitioner’s identification of goods were limited to use in
laboratories in “environmental and industrial” fields.
Cancellation No. 92046554
20
appearance, meaning and commercial impression. Respondent
“conced[es] that Registrant’s LABWORKS mark and Petitioner’s
LABWORKS mark are literally identical.” (Brief, p. 29).
Although not raised as an affirmative defense,
respondent, for the first time in its brief, alleges that
petitioner’s mark is merely descriptive. We decline to
consider respondent’s claim inasmuch as it neither was pled
as a “defense” in the answer nor tried by the parties under
Fed. R. Civ. P. 15(b); for respondent to raise it for the
first time in the brief at final hearing is manifestly
untimely. Thus, we have given respondent’s allegation no
consideration. See, e.g., Hornby v. TJX Companies Inc., 87
USPQ2d 1411, 1415 (TTAB 2008); and Chicago Corp. v. North
American Chicago Corp., 20 USPQ2d 1715, 1717 n.5 (TTAB
1991). See generally TBMP §314 (3d ed. 2011). So as to be
clear, we consider petitioner’s mark to be inherently
distinctive.
The identity between the marks is a factor that weighs
heavily in favor of a finding of likelihood of confusion.
Fame
Petitioner argues that its mark is “quite strong and
well-known.” (Brief, pp. 49-50). To the extent
petitioner’s claim may be construed as a claim of fame, we
begin by noting that fame of the prior mark plays a dominant
role in likelihood of confusion cases featuring a famous
Cancellation No. 92046554
21
mark. Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367,
63 USPQ2d 1303 (Fed. Cir. 2002); 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 Jewelers Guild
Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).
Petitioner’s mark has been in use since 1986; during
that time period, petitioner made over 500 sales of its
software. Sales revenue for goods and services sold under
the mark LABWORKS, from 2002 through 2008, total about $46
million. Petitioner has advertised its products every year
since 1986 (but no promotional expenditure numbers have been
introduced), and petitioner has appeared at the annual
Pittsburgh Conference (“PITTCON”) trade show from 1988 to
2009; this is the largest trade show and technical
conference of analytical chemists in the country. (Epton
dep. I, p. 140). Further, petitioner has occasionally been
the subject of unsolicited publicity in industry
publications.
Cancellation No. 92046554
22
The record establishes that petitioner has enjoyed a
degree of success with its goods and services sold under its
mark LABWORKS. We have no way to gauge the degree, however,
inasmuch as petitioner has not given us any context in which
to do so. See Bose Corp. v. QSC Audio Products Inc., 63
USPQ2d at 1309. Accordingly, we find that the record falls
short of proving fame as contemplated by case law and, thus,
decline to confer on petitioner’s mark the exalted status of
“famous.”
This factor is neutral.
Third-Party Mark Usage
This factor bears on the degree of distinctiveness of
petitioner’s mark for purposes of the likelihood of
confusion analysis. By relying on third-party uses and
registrations of LABWORKS marks, or variants of “LABS-” or
“-WORKS” formative marks in connection with laboratory goods
and services, respondent would have us conclude that
petitioner’s mark is entitled to a limited scope of
protection that does not extend to respondent’s mark for its
goods and services.
If the common elements of conflicting marks are words
that are suggestive (i.e., “weak”), then this reduces the
likelihood of confusion. See, e.g., Keebler Co. v. Murray
Bakery Products, 866 F.2d 1386, 9 USPQ2d 1736 (Fed. Cir.
1989) (PECAN SANDIES and PECAN SHORTEES); Magnaflux Corp. v.
Cancellation No. 92046554
23
Sonoflux Corp., 231 F.2d 669, 109 USPQ 313 (CCPA 1956)
(MAGAFLUX and SONOFLUX); and Land-O-Nod Co. v. Paulison, 220
USPQ 61 (TTAB 1983) (CHIROPRACTIC and CHIRO-MATIC).
The Board has, in the past, given weight to evidence of
widespread and significant use by third parties of marks
containing elements in common with the involved marks when
considering claims of likelihood of confusion, because such
evidence may demonstrate that confusion is not, in reality,
likely to occur in the marketplace. See Miles Laboratories
Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445,
1462 (TTAB 1987).
In support of its argument on this factor, respondent
introduced an electronic search report of the Office’s
database showing three live third-party registrations of the
mark LABWORKS. (Respondent’s Ex. R-31). The registrations
cover software marketed to architects and designers for
designing the physical layout of laboratories (RN 2766229 of
the mark LABWORKS); installation, servicing, maintenance and
repair of food, chemical, veterinary and medical laboratory
equipment (RN 4044750 of the mark LABWORKS EQUIPMENT
SERVICE, INC.); and inventory software for tracking
inventory in a laboratory (RN 2031087 of the mark LABWORKS).
Given the dictionary meanings of the commonly used and
understood terms “lab” and “works,” there is little
hesitation in finding that the mark LABWORKS is suggestive
Cancellation No. 92046554
24
when used in connection with goods and/or services that
manage laboratory workload. However, the registrations, in
and of themselves, fail to prove that “LABWORKS” is a
commercially weak term. Absent evidence of actual use,
third-party registrations have little probative value
because they are not evidence that the marks are in use on a
commercial scale or that the public has become familiar with
them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d
1004, 177 USPQ 462, 463 (CCPA 1973); and Productos Lacteos
Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98
USPQ2d 1921, 1934 (TTAB 2011). Even respondent acknowledges
that “these [registrations] have no probative value.”
(Brief, p. 44).
Mr. Epton was asked about his knowledge of competitors
that use “LAB” as the first term in their marks for LIMS
software; he suspected that there were “many” uses, and that
he was aware of “several.” (Epton dep. II, pp. 117-18).
Respondent also introduced, through the testimony of Jack
Baldini, twenty examples of advertisements for a variety of
laboratory products, all of which are identified with marks
starting with “LAB-” or ending with “-WORKS.”
To state the obvious, it is not surprising that several
marks used in the laboratory industry would begin with the
term “LABS.” However, although we have carefully considered
the evidence of third-party usage, we find that it is not
Cancellation No. 92046554
25
persuasive in meaningfully diminishing the distinctiveness
of petitioner’s mark. Firstly, we point out that none of
the marks is identical to petitioner’s mark LABWORKS, as is
the case with respondent’s mark. Secondly, respondent has
not furnished any evidence regarding the extent of use of
the marks by these third parties so that we might gauge the
exposure to relevant customers. See Carl Karcher
Enterprises Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125,
1131 (TTAB 1995). Thus, this evidence is entitled to
limited probative value.
In sum, there is a lack of probative evidence
demonstrating that the term LABWORKS has been so commonly
used that petitioner’s mark is only entitled to a narrow
scope of protection.
This du Pont factor is neutral in our likelihood of
confusion determination.
The Goods and/or Services
Given that the marks are identical, the parties have
focused a significant portion of their attention on the du
Pont factor of the similarity/dissimilarity between the
goods and/or services. In considering this du Pont factor,
we initially note that where essentially identical marks are
involved, as is the case here, the degree of similarity
between the parties’ goods and/or services that is required
to support a finding of likelihood of confusion declines.
Cancellation No. 92046554
26
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-
1689 (Fed. Cir. 1993) (“even when the goods or services are
not competitive or intrinsically related, the use of
identical marks can lead to the assumption that there is a
common source”); Time Warner Entertainment Co. v. Jones, 65
USPQ2d 1650 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d
1812 (TTAB 2001). It is only necessary that there be a
viable relationship between the two to support a finding of
likelihood of confusion. In re Concordia International
Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). The issue
here, of course, is not whether purchasers would confuse the
parties’ goods and/or services, but rather whether there is
a likelihood of confusion as to the source of these goods
and/or services. In re Rexel Inc., 223 USPQ 830 (TTAB
1984).
So as to be clear, in considering this factor, we are
comparing the following goods and services:
Petitioner’s (common law rights):
Computer software for laboratory
information management, namely software
for maintaining and managing a database
of information pertaining to laboratory
procedures, for planning, scheduling,
tracking and evaluating laboratory
events and procedures, for maintaining
records of laboratory procedure data,
for reporting information about the
status and results of laboratory
procedures, and for the transfer of data
to and from laboratory instruments in
the fields of environmental, water and
waste water, utilities, process control,
Cancellation No. 92046554
27
forensics, food and beverage, and
agriculture; and

Computer software consultation, design
and development for laboratories in the
fields of environmental, water and waste
water, utilities, process control,
forensics, food and beverage, and
agriculture.

Respondent’s (identification in the involved registration):
computer software and manuals therefor
for use in connection with medical
records, patient information, clinical
histories, clinical task workflow,
radiology and laboratory test ordering
and results reporting, and providing
remote access to the foregoing between
users; and

application service provider featuring
software for use in connection with
medical records, patient information,
clinical histories, clinical task
workflow, radiology and laboratory test
ordering and results reporting, and
providing remote access to the foregoing
between users; computer software
consultation, design for others and
development.

Goods
In considering the goods, an initial matter involves
the scope of respondent’s identification as set forth in its
involved registration. Petitioner urges the Board to
interpret respondent’s identification of computer software
“as covering software for use in connection with each listed
item separately, not software for use only in connection
with all six of the individually listed items.” (emphasis
in original). According to petitioner, the identification
Cancellation No. 92046554
28
“covers computer software for use in connection with
laboratory test ordering and results reporting,” and “also
covers computer software for use in connection with each of
the other five individually listed items.” (emphasis in
original). (Petitioner’s Brief, p. 15). Petitioner then
attempts to make the point that the terminology “laboratory
test ordering and results ordering” standing alone is
broadly worded, and thus overlaps with petitioner’s
software.
We do not share petitioner’s parsing of respondent’s
identification of goods. Rather, we agree with respondent’s
view that is entirely consistent with the record: “That
description, in its ordinary meaning suggests that
‘laboratory tests’ are those performed in a medical context
other than ‘radiology’ tests. There is no comma between
‘radiology’ and ‘laboratory test.’” (Brief, p. 37). The
identification includes the terminology “medical,”
“patient,” “clinical” and “radiology.” It is clear to us
that, in the context of the other items in the
identification of goods, the term “laboratory test” refers
to medical laboratory tests. See TMEP §1402.01(a) (8th ed.
2011) (“In general, commas should be used in the
identification to separate items within a particular
category of goods or services.”).
Cancellation No. 92046554
29
We now turn to consider the parties’ goods.
Petitioner’s goods are, at bottom, software to manage
workflow and information in a laboratory setting. As noted
earlier, the genesis of petitioner’s product, a member of
the genre of computer software called “laboratory
information management system” (“LIMS”), derived from Mr.
Epton’s work in an environmental laboratory and his desire
to manage the laboratory’s workflow through automation:
“The program I created...was software for tracking work
being performed in a laboratory, for ordering analyses to be
performed on samples, for entering results of that analyses,
for producing reports related to samples and analyses.”
(Epton dep. I; pp. 18-20.). Mr. Lehtola confirmed these
functions: “My software provided features which would
permit a laboratory to log in samples, order tests on those
samples, enter results against those tests, either manually
or from an instrument, and prepare and produce reports.”
(Lehtola dep. I, p. 239). Petitioner’s brochure, used in
1996, states that “LABWORKS is a PC based Laboratory
Information Management System,” and “Basic operations are
sample login, tracking, results entry, reporting and
invoicing.” (Ex. P-77). Petitioner touted certain
efficiencies afforded by its software, including making
entry of data automatic; reducing typographical and clerical
error, and paperwork; providing tight, effective
Cancellation No. 92046554
30
organization of the laboratory; and providing the laboratory
manager with a better overall view of the laboratory.
(Epton dep. I, ex. P-67).
The record includes an article “Market Analyses and
Perspectives - The Global LIMS Market: Standing Out in the
Crowd” (May 1996) prepared by Strategic Directions
International, Inc., which describes itself as the “leading
international management consulting firm in the highly
specialized field of analytical instruments.” The article
describes goods of the type sold by petitioner: “Computers
are used in the analytical laboratory to perform two basic
tasks: collecting and analyzing data generated by
laboratory instruments, and managing information about the
work of the lab itself. Laboratories generate large amounts
of information. A Laboratory Information Management System
(LIMS) allows the laboratory to manage large sample loads
more efficiently and productively, streamlining workflow and
resulting in an overall cost reduction for the lab.
Consequently, a LIMS has become an essential component of
laboratories.” (Epton dep., Ex. R-1).
Although Mr. Epton was fully conversant with laboratory
information management systems (LIMS), he was unfamiliar
with the acronym “LIS,” meaning “laboratory information
system,” the type of system, most commonly used in medical
Cancellation No. 92046554
31
testing laboratories, to which respondent’s software
connects.
Mr. Gregory, familiar with both LIS (“laboratory
information system”) and LIMS (“laboratory information
management system”), articulated the differences between the
two:
LIS is a system which we encounter
regularly in hospital laboratories and
also in commercial laboratories, which
is a specialized information technology
solution designed to help the hospital
that is doing medical testing on
patients manage the work flow associated
with taking in test orders and the
specimens associated with them for
specific patients, managing the process
of getting those specimens to the right
instruments, having the right tests
performed on those specimens using those
instruments, also then getting back the
results, ensuring that the results are
properly subject to quality control,
using operations within the LIS, and
then reporting out those results to the
physicians who have ordered those
testing for those patients. They tend
to be patient-centric. In fact, they
are. They have to be, because all of
the work that’s being performed in that
context is being performed for – on a
work flow that is directed for – to a
specific order with one or more tests
associated with that order for a
specific patient ordered by a physician.
So all of the work flow is very oriented
toward dealing with specific specimens
associated with patients and delivering
the results associated with those test
requests. All of it is done by LISs
and, in fact, everything that we
interface with when we do an electronic
interface to sending orders and/or to
get out results electronically is with
LIS systems. LIMS systems are more
Cancellation No. 92046554
32
flexible, much more open-ended types of
environments. They are specialized IT
solutions that can handle work flows
that are oriented toward samples,
typically, and not oriented generally
toward patients. And basically, as I
said before, they are oriented toward
batches of samples, or in the case of a
clinical trial, they may be oriented
toward basically subjects in a study,
all of whom are in a particular batch or
in a particular category by definition.
They are not, to my knowledge, patient-
centric. That is not the way they work.
And while they have a lot more
flexibility in terms of how they can be
designed, that is to say that you can
create work flows in them to do specific
kinds of things, they tend not to work
very well in the medical testing
laboratory, because LISs are much more
really built to work in that way. You
can create a wide-ranging test catalog,
a patient-centric master patient index
and a patient-centric approach, and in
LIS, it’s really, out of the box, much
more capable of being used by clinical
laboratories than a LIMS system.
(Gregory dep., pp. 99-102).

The primary purpose of respondent’s software is to
connect the IT systems of medical laboratories with the IT
systems of hospitals and physicians in order to allow remote
medical test order entry and reporting. Respondent’s
LABWORKS software routinely interfaces with LIS systems in
order to facilitate remote electronic entry of testing
orders and to report the final results of such testing in
connection with a specific identifiable patient.
Respondent’s LABWORKS software is not able to connect to
laboratory instruments, prepare worklists for lab
Cancellation No. 92046554
33
technicians, or take raw data to produce the results
eventually reported to doctors ordering tests.
Respondent itself acknowledges, while arguing that
there is no likely confusion, that “[b]oth Registrant and
Petitioner market software products related to
laboratories.” (Brief, p. 31). Indeed, that is the simple
reality in this case, namely that both parties’ goods are
software for use in a laboratory environment. But, that is
where the similarity ends. The mere fact that the parties’
goods fall under the broad category of software for use in
laboratories is not a sufficient basis upon which to find
that they are related for purposes of likelihood of
confusion. See In re W.W. Henry Co., 82 USPQ2d 1213, 1215
(TTAB 2007); and Harvey Hubbell Inc. v. Tokyo Seimitsu Co.,
Ltd., 188 USPQ 517, 520 (TTAB 1975). The goods perform
different functions and are used for different purposes. In
a nutshell, petitioner’s goods control the workflow in
environmental and industrial laboratories; respondent’s
goods connect patient records and medical laboratory test
orders and results with physicians and other clinicians.
Further, as will be discussed in a later section of this
decision, the software is used by different types of
laboratories. It is difficult for a LIMS vendor to come
over to the LIS space in the medical field. (Gregory dep.,
p. 121). And, respondent’s software is not even a LIS, but
Cancellation No. 92046554
34
rather an application that interfaces with LIS systems in
the medical laboratory field.
In its attempt to show that the goods are related,
petitioner introduced excerpts of more than twenty third-
party websites showing that each entity markets its software
to both medical and non-medical testing laboratories
(including public health labs). (Sousa dep., exs. P-1
through P-22). For example, P-12 shows that LabLite, in
marketing its software and consulting services, indicates
that its customers include “water and waste water treatment
plants, universities, pharmaceutical, petrochemical,
medical, manufacturing, genetic, food testing,
environmental, research, mining, and more.” We also
recognize that in the same trade magazine an article about
petitioner’s LABWORKS software appeared on the same page as
an article about a competitor’s LIMS software that is
marketed to clinical labs. (Lehtola dep. II, p. 133).
Petitioner also submitted twelve use-based third-party
registrations showing that each of the marks covers software
and services intended for use by a variety of different
laboratories, including both medical and non-medical testing
laboratories. (Notice of Reliance, NR-11 through NR-22).
The evidence of third-party uses and registrations to
show a relationship between the goods is not persuasive. It
is not surprising that a single entity may offer its goods
Cancellation No. 92046554
35
to a variety of customers in different fields, both medical
and non-medical. However, this evidence fails to establish
that the same specific types of software involved herein –
laboratory information management systems to manage workflow
in environmental and industrial laboratories on the one
hand, and connectivity software connecting patient records
and medical laboratory test orders and results with
physicians on the other – ever emanate from the same source.
In the course of its business, respondent has assisted
medical laboratories using respondent’s LABWORKS software in
notifying public health departments when medical test
results show a highly contagious disease; governmental
regulations require such notification. Although this
capability of communicating with public health entities is
not actively marketed to respondent’s customers, the feature
is “in [respondent’s] arsenal.” (Gregory dep., pp. 311-
314). Respondent’s website for its LABWORKS software
indicates that respondent’s Public Health Division is a
“related” division with its own website. (Sousa ex. P-32).
The exhibit indicates that respondent established a
centralized data-brokering capability through its data
center, which receives reports to determine if the incidents
are reportable. If they are, respondent will report them to
the appropriate public health department through
respondent’s public health link, or “PHIL.” Thus,
Cancellation No. 92046554
36
respondent has linked its LABWORKS software customers to
public health departments to assist the customers in
complying with reporting regulations. However, it would
appear that contact between respondent and public health
departments is made through respondent’s PHIL software. The
following appears on respondent’s website, quoting Mr.
Gregory:
Atlas is approaching private-sector
laboratories that it has worked with on
the LabWorks side of the equation, he
says. LabWorks is an order-entry
solution that outreach programs use. To
make this strategy workable, Atlas is
establishing a centralized data-
brokering capability through its data
center in Agoura Hills, Calif. The
Center will receive incident reports
that come out of any laboratory
information system enrolled in the
program. We’ll take those incident
reports, filtered to determine that they
are in fact reportable incidents, and
then broker them to the appropriate
local health department that is supposed
to receive that report by statute,
Gregory says. We call this the public
health information link or PHIL.

Although we recognize the importance of the relationship
between medical testing laboratories and public health
departments, the simple fact is that these classes of
customers are different.
In view of the above, we find that the parties’ goods
are specifically different, serving very specific and
distinct purposes and functions. The dissimilarity between
the goods weighs in favor of respondent.
Cancellation No. 92046554
37
Services
As indicated above, petitioner has established prior
common law rights in its mark for computer software
consultation, design and development for laboratories in the
fields of environmental, water and waste water, power
generation, process control, forensics, food and beverage,
and agriculture.
Registrant’s services are identified as “application
service provider featuring software for use in connection
with medical records, patient information, clinical
histories, clinical task workflow, radiology and laboratory
test ordering and results reporting, and providing remote
access to the foregoing between users; computer software
consultation, design for others and development.”
The presence of a semicolon in respondent’s recitation
of services is significant for purposes of the likelihood of
confusion analysis. See Cunningham v. Laser Golf Corp., 55
USPQ2d at 1846 (“the identification of goods/services stated
in the registration...frames the issue”). Thus,
respondent’s services are construed to include separate
categories of services comprising “application service
provider featuring software for use in connection with
medical records, patient information, clinical histories,
clinical task workflow, radiology and laboratory test
ordering and results reporting, and providing remote access
Cancellation No. 92046554
38
to the foregoing between users” and “computer software
consultation, design for others and development.” That is
to say, the “computer software consultation, design for
others and development” services are set apart from the
remainder of the recitation by a semicolon, and these
services therefore stand alone, and constitute separate
services to be compared to petitioner’s services for
purposes of our analysis under the second du Pont factor.
See TMEP §1402.01(a) (8th ed. 2011) (“Semicolons should
generally be used to separate distinct categories of goods
and services within a single class.”). Accordingly, for
purposes of comparing petitioner’s services to respondent’s
services, we will focus on the broadly worded “computer
software consultation, design for others and development”
services portion of the recitation set forth in respondent’s
registration.
Where the services in an involved registration are
broadly identified as to their nature and type, as is the
case herein, such that there is an absence of any
restrictions as to the channels of trade and no limitation
as to the classes of purchasers, it is presumed that in
scope the recitation of services encompasses all the
services of the nature and type described therein, that the
identified services are offered in all channels of trade
which would be normal therefor, and that they would be
Cancellation No. 92046554
39
purchased by all potential buyers thereof. 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 Elbaum, 211
USPQ 639 (TTAB 1981).
Thus, respondent’s “computer software consultation,
design for others and development” is presumed to encompass
all types of these services and that they would be offered
in all trade channels which would be normal therefor.
Accordingly, these services would include the identical type
of services rendered by petitioner. Moreover, the trade
channels would necessarily include the same trade channels
and purchasers as those of petitioner’s services, including
environmental and other industrial laboratories.
The fact that respondent’s other services recited in
the registration are delineated for the medical laboratory
setting is irrelevant. The broadly worded “computer
software consultation, design for others and development”
services are separated from the more specifically worded
portion of the recitation by a semi-colon. Thus, the
limitation included in the first portion of respondent’s
recitation to medical testing laboratories does not extend
to the later separate portion.
Likelihood of confusion may be found based on any item
that comes within the identification of goods and/or
Cancellation No. 92046554
40
services in the involved registration. Tuxedo Monopoly,
Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981). Accordingly, we find that
petitioner’s services are related to respondent’s “computer
software consultation, design for others and development”
services so that, when rendered under identical marks,
confusion among purchasers is likely to occur. The identity
between the marks and the legally identical services (again,
as recited in the registration) outweigh the sophistication
of the purchasing decision (see discussion, infra).
The legal identity between the services weighs in favor
of petitioner.
Trade Channels and Classes of Purchasers
Petitioner identified seven major industries for
customers for its software: water and wastewater; process
control; power generation; environmental; forensics; food
and beverage; and agricultural. (Lehtola dep. I, p. 123;
ex. P-121). In saying this, we recognize that petitioner’s
software is used by public health departments; but in each
instance, save one, the laboratories are testing
environmental samples. The record is replete with examples
of petitioner’s software being used to test water and soil
samples by various state and local government environmental
testing labs, and other government agencies such as the U.S.
Department of Agriculture and the Environmental Protection
Cancellation No. 92046554
41
Agency to detect contaminants that may be harmful to human
health.
Respondent’s customers are testing laboratories in the
medical field, and have included Cleveland Clinic,
University of Virginia Medical Center, Vanderbilt University
Medical Center and Mayo Clinic.
The potential customers for the parties’ goods and
services are, in very general terms, testing laboratories,
but that is where the similarity ends. To be sure, the
record is devoid of evidence to show that there is any
overlap in purchasers. That is to say, the software is
directed to different purchasers.
The record includes, however, one instance when
petitioner’s software has been used to run tests on human
blood to detect lead that can cause lead poisoning. This
essentially is the only example, a public health laboratory,
to which petitioner points in identifying common purchasers
(potential and actual) of the parties’ software. The State
of Michigan Department of Public Health purchased a license
to use petitioner’s software to automate its laboratory and
manage the testing of human blood to detect lead. (Epton
dep. I, pp. 130-31; dep. II, pp. 84-87; Lehtola dep., pp.
146-148). The date of this sale is not reflected in the
record.
Cancellation No. 92046554
42
In this regard, petitioner states that “[m]ost telling
is the evidence that both parties offered to sell their
LABWORKS software to public health laboratories.” (Reply
Brief, p. 8). Indeed, respondent discussed selling its
LABWORKS software to the Los Angeles Department of Public
Health. We also recognize that respondent has discussed the
utility of its software in veterinary, toxicology and
clinical trial laboratories. However, the simple fact is
that respondent never has consummated a sale other than to
medical testing laboratories, a fact reflected in its
recitation of services.
Petitioner’s LABWORKS software also has been used by
one customer (Kennecott Utah Copper Corp. in 1992) to
support testing of urine to ensure safety in its mining
operations. (Lehtola dep. I, pp. 33-35).
In sum, the record shows one use of petitioner’s
software by a public health laboratory to test blood, and
that respondent had discussions, but no sale, with a single
public health laboratory. Any perceived overlap in this
field is insufficient upon which to base a finding that
there are common purchasers for the parties’ goods.
Petitioner makes the point at every opportunity to
assert that there is nothing to prevent its software from
being used in clinical labs to test human blood, urine and
tissue. (Epton dep. I, pp. 127-128). In doing so,
Cancellation No. 92046554
43
petitioner points out that similar equipment and instruments
are used in both environmental and clinical labs, and the
record supports this assertion. According to petitioner, it
does not matter when using petitioner’s software whether the
laboratory instruments are testing blood, urine, tissue,
water or soil. (Lehtola dep. I, pp. 61-65). Mr. Epton
testified that “I know of no reason we could not interface
any computerized instrument,” including those used in
testing blood, urine and human tissues. (Epton dep. II, p.
9; p. 11). Mr. Epton recalled that customers have wanted to
use petitioner’s software for new purposes not even
envisioned by petitioner, such as analyzing jet fuels and
spills at military bases. (Epton dep. I, p. 191).
Petitioner has not actively promoted its LABWORKS software
for other uses, but such uses “could be going on without our
knowledge,” and “we heard tales” of other uses. (Epton dep.
II, pp. 91-92). Mr. Lehtola insists that petitioner’s
software could be configured to work in any laboratory,
including hospital, medical and clinical. Mr. Lehtola
essentially asserts that petitioner’s software would be
useful in any lab that receives samples, orders tests and
receives reports. (Lehtola dep. I, p. 35; pp. 40-41; p.
123).
Although petitioner insists that its potential
customers include public health laboratories performing
Cancellation No. 92046554
44
clinical analyses, this insistence is undercut by the fact
that its customers in the field amounted to a single one,
namely the Michigan state lab testing human blood for the
presence of lead. At most, a second use involved the
testing of urine for mining safety by a private mining
company. On cross-examination, when Mr. Epton was asked if
he could identify a single customer of petitioner that was
not in the water and waste water, environmental, process
control, food and beverage, chemical, utilities,
transportation or agricultural industries, he answered “No.”
(Epton dep. II, p. 104). Mr. Lehtola is not aware of any
sales by petitioner to medical labs. (Lehtola dep. II, p.
33).
Although petitioner never ruled out configuring its
software to run in clinical laboratories, it never did so.
As highlighted by respondent’s evidence, entry into the
medical laboratory field can be challenging; there are
numerous hurdles to jump, including knowledge of medical
testing codes, HIPPAA requirements, Medicare and Medicaid,
and health insurance payment frameworks.6 Outside of the
environmental and industrial laboratory settings, any use by
petitioner appears, by and large, to be de minimis at best,
and theoretical at worst. Further, to the degree that there

6 Petitioner’s software does not actually utilize any test codes
in its applications. (Epton dep. II, p. 149).
Cancellation No. 92046554
45
could ever be an overlap in public health labs, as noted
above, the likelihood of confusion would be de minimis.
Electronic Design & Sales, Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1392 (Fed. Cir. 1992)
(“the mere purchase of the goods and services of both
parties by the same institution does not, by itself,
establish similarity of trade channels or overlap of
customers...the likelihood of confusion must be shown to
exist not in a purchasing institution, but in ‘a customer or
purchaser.’” (emphasis in original)).
Petitioner and respondent do not attend the same trade
conferences to market their respective LABWORKS software,
and the parties advertise in different trade publications;
this comes as no surprise inasmuch as their products are
targeted at different classes of purchasers.
When all of the testimony and evidence is considered,
we find that the parties’ goods are sold in different trade
channels to different customers. In sum, the same
individuals do not encounter the mark and products or, even
if they did (as in, for example, a public health lab), they
would do so only in the context of a thoughtful purchasing
process leaving no room for misunderstanding about the
sources of the respective software (as discussed infra).
See Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d
1399, 1411-13 (TTAB 2010).
Cancellation No. 92046554
46
The dissimilarity between trade channels and classes of
purchasers weighs in favor of respondent.7
Conditions of Sale/Sophistication of Purchasers
As a first point, respondent attempts to confine
petitioner to its argument made during prosecution of its
application. When faced with the Section 2(d) refusal based
on respondent’s registration, petitioner argued that there
was no likelihood of confusion between the marks “because
the parties’ respective goods are different.” Petitioner
further alleged: “[The parties’] customers would typically
be sophisticated specialists within their respective fields,
and would not be easily susceptible to confusion. None of
the pertinent goods would be purchased on impulse, or
without careful consideration of the party standing behind
them.” (Response to Office action, 3/23/06).
Petitioner’s statements were made in an attempt to
avoid the need for this cancellation action if it could
overcome the examining attorney’s refusal of registration.
We have considered petitioner’s prior statements as
illuminative of shade and tone in the total picture of
likelihood of confusion, but nothing more than that. See

7 With respect to the services, the broadly worded recitation
“computer software consultation, design for others and
development” does not bear any limitations as to trade channels
and purchasers. Thus, as pointed out earlier, given the
similarity of respondent’s services to petitioner’s services, it
is presumed that the parties’ services are rendered in the same
trade channels to the same classes of purchasers.
Cancellation No. 92046554
47
Interstate Brands Corp. v. Celestial Seasonings, Inc., 576
F.2d 926, 198 USPQ 151 (CCPA 1978); and Anthony’s Pizza &
Pasta International, Inc. v. Anthony’s Pizza Holding Co., 95
USPQ2d 1271, 1281 (TTAB 2009).
In any event, the record establishes that the purchase
of either of the parties’ software involves a thoughtful
decision; the same applies to the parties’ services. This
high degree of care when making the purchasing decision is
not surprising given the nature of the goods, as well as
their relatively expensive cost.8 The relevant purchasing
public for the laboratory goods and services comprises
laboratory managers, scientists and other laboratory
professionals. In many instances, whether in matters of
detecting water and soil contaminants hazardous to public
health, or of a patient’s blood test, there is much at
stake. Further, the software involves setup and
customization to match a customer’s needs. Simply put,
these products are not “off-the-shelf” ones that are bought
on impulse, but rather are bought after careful thought.
Mr. Lehtola testified that “I’ve sold systems anywhere
that from the first contact with a customer to the invoice
was nine years, all the way to probably less than a month,
maybe two weeks, and then all across the board in between

8 An early edition of petitioner’s software was listed at
$17,500. (Epton dep. I, p. 95, ex. P-48). Respondent’s evidence
does not include the price of its goods or services.
Cancellation No. 92046554
48
there.” (Lehtola dep. II, p. 53). Mr. Lehtola further
stated that he dealt with many types of professional people
in the buying process, ranging from laboratory owners and
managers, to bench chemists. (Lehtola dep. I, p. 239). Mr.
Epton echoed these comments, indicating that sales to public
health laboratories included discussions with “engineers,
consultant, bureaucratic officials who had roles in
purchasing and approving purchases.” (Epton dep. II, p.
35).
Mr. Gregory stressed the need for respondent to
intelligently discuss the customer’s needs prior to
purchase, especially given that “[l]aboratorians, in my
experience anyway, are a very demanding and exacting lot.”
(Gregory dep., p. 143). Mr. Gregory testified that he
discussed purchases with the potential customer’s IT
department, chief executive officer, chief financial officer
and physicians, among other professionals. (Gregory dep.,
p. 324).
Based on the record and the nature of the products and
services, we find that they are likely to be bought only
after careful consideration by persons who are quite
knowledgeable about what and from whom they are buying. See
Electronic Design & Sales, Inc. v. Electronic Data Systems
Corp., 21 USPQ2d at 1392; Astra Pharmaceutical Products,
Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 220 USPQ
Cancellation No. 92046554
49
786, 791 (1st Cir. 1983); Dynamics Research Corp. v.
Langenau Mfg. Co., 704 F.2d 1575, 217 USPQ 649 651 (Fed.
Cir. 1983); and Edwards Lifesciences Corp. v. VigiLanz
Corp., 94 USPQ2d at 1413. In sum, the purchase of the
parties’ respective goods and services entails a thoughtful
decision made by knowledgeable purchasers; the conditions of
sale significantly diminishes the likelihood of confusion.
This factor weighs in respondent’s favor.
Actual Confusion
Respondent points to the coexistence of the involved
marks for a period of over 14 years without any reported
instances of actual confusion between them. Respondent
highlights the fact that neither party had ever heard of the
other party or the other’s mark until respondent’s mark was
cited by the examining attorney as a bar to registration of
petitioner’s applied-for mark. Mr. Gregory indicates that
respondent never received any cease and desist letter from
petitioner, that there have been no misdirected
communications and that he is unaware of any use of the
parties’ goods in the same laboratory. (Gregory dep., pp.
185; 187-89).
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.
Cancellation No. 92046554
50
Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA
1965). In any event, while there is some evidence bearing
on the extent of petitioner’s use, the record is devoid of
probative evidence regarding the extent of use of
respondent’s mark. Firstly, while respondent points to 14
years of contemporaneous use of the marks since 1996, Mr.
Gregory stated that respondent did not actively market its
LABWORKS brand product until 2003. (Gregory dep., p. 86).
Secondly, although Mr. Gregory testified that respondent
enjoys a 20% market share (Gregory dep., p. 163), no further
information was introduced to give context to this figure.
That is to say, neither respondent’s sales under the mark or
advertising expenditures for promotional efforts are of
record. Thus, we are unable to accurately gauge whether
there has been a meaningful opportunity for confusion to
have occurred in the marketplace. Notwithstanding the
above, proof of actual confusion is not necessary to
establish likelihood of confusion. Giant Food, Inc. v.
Nation’s Foodservice, Inc., 218 USPQ at 396. Nevertheless,
it is “instructive” that the parties were totally unaware of
one another until the Office raised respondent’s
registration as a bar to registration of petitioner’s mark.
See Sheller-Globe Corp. v. Scott Paper Co., 204 USPQ 329,
333 (TTAB 1979).
Cancellation No. 92046554
51
Accordingly, the eighth du Pont factor involving the
length of time during and conditions under which there has
been contemporaneous use without evidence of actual
confusion is considered neutral.
Laches
The affirmative defense of laches was pleaded in the
answer, and is the only pleaded defense that respondent
maintained in its brief. Respondent contends that
petitioner unreasonably delayed in bringing this
cancellation proceeding. More specifically, respondent
contends: “petitioner filed the instant cancellation
proceeding 10 years after [respondent] began use of its
mark; 3 years 7 months and 14 days after respondent filed
for its registration; and 2 years 10 months and 4 days after
[respondent’s] application was published for opposition.”
(Brief, p. 52). Respondent further asserts that petitioner
has not explained the reasons for its delay, and that
respondent, during the delay, continued to develop the
goodwill built around its mark.
We agree with petitioner’s assessment that laches has
not been established. Laches is generally available against
a Section 2(d) claim of likelihood of confusion, the only
exception being when confusion is inevitable. National
Cable Television Assn. Inc. v. American Cinema Editors Inc.,
973 F.2d 1572, 19 USPQ2d 1424 (Fed. Cir. 1991). In order to
Cancellation No. 92046554
52
prevail on the affirmative defense of laches, a defendant
must establish that there was undue or unreasonable delay by
the plaintiff in asserting its rights, and prejudice to the
defendant resulting from the delay. Bridgestone/Firestone
Research Inc. v. Automobile Club de l’Ouest de la France,
245 F.3d 1359, 58 USPQ2d 1460 (Fed. Cir. 2001). Mere delay
in asserting a trademark-related right does not necessarily
result in changed conditions sufficient to support the
defense of laches. There must also have been some detriment
due to the delay. Bridgestone/Firestone Research Inc. v.
Automobile Club de l’Ouest de la France, 58 USPQ2d at 1463.
Respondent’s Registration No. 2833981 issued on April
20, 2004. There is no evidence to suggest that petitioner
had actual knowledge of respondent’s mark until respondent’s
registration was cited as a Section 2(d) bar in an Office
action dated May 1, 2006. However, petitioner is charged
with constructive notice of the registration when it issued
on April 20, 2004. Teledyne Technologies, Inc. v. Western
Skyways, Inc., 78 USPQ2d 1203, 1210 (TTAB 2006), aff’d
unpublished opinion, Appeal Nos. 2006-1366 and 1367 (Fed.
Cir. Dec. 6, 2006); and Christian Broadcasting Network Inc.
v. ABS-CBN International, 84 USPQ2d 1560, 1572 (TTAB 2007).
The petition for cancellation was filed on October 31, 2006,
approximately 2½ years later.
Cancellation No. 92046554
53
Firstly, we find that the time period between the issue
date of respondent’s registration and the filing of
petitioner’s petition for cancellation does not constitute
unreasonable delay. Secondly, we find that respondent’s
proofs fall short of establishing detriment due to the
delay. Hornby v. TJX Companies Inc., 87 USPQ2d 1411, 1419
(TTAB 2008). Although respondent asserts that it built up
goodwill during the alleged delay, the record is devoid of
sales figures, advertising expenditures, and the like; in
the absence of such facts, it is impossible to assess the
detriment, if any, suffered during the alleged delay.
Accordingly, respondent’s affirmative defense of laches
fails.
Conclusion
The evidentiary record in this case is substantial, and
the arguments are numerous. We have carefully considered
all of the evidence made of record pertaining to the issue
of likelihood of confusion, as well as all of the parties’
arguments related thereto, including any evidence and
arguments not specifically discussed in this opinion.
With respect to the goods, the identity between the
marks weighs heavily in petitioner’s favor. However, the
dissimilarity between the goods, trade channels and classes
of purchasers are factors that weigh in favor of respondent.
Further, the thoughtful purchasing decision made by
Cancellation No. 92046554
54
discriminating purchasers is a significant factor in
respondent’s favor. On balance, we find that the du Pont
factors weigh in favor of respondent, and a finding of no
likelihood of confusion.
Keeping in mind that petitioner has the burden of proof
of establishing its likelihood of confusion claim by a
preponderance of the evidence, we see petitioner’s
likelihood of confusion claim regarding the goods as
amounting to only a speculative, theoretical possibility,
notwithstanding that identical marks are involved. Language
by our primary reviewing court is helpful in resolving the
likelihood of confusion issue with respect to the goods in
this case:
We are not concerned with mere
theoretical possibilities of confusion,
deception, or mistake or with de minimis
situations but with the practicalities
of the commercial world, with which the
trademark laws deal.

Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 21 USPQ2d at 1391, citing Witco Chemical Co. v.
Whitfield Chemical Co., Inc., 418 F.2d 1403, 1405, 164 USPQ
43, 44-45 (CCPA 1969), aff'g 153 USPQ 412 (TTAB 1967).
The likelihood of confusion between the marks when used
in connection with the parties’ services is a different
matter. As explained above, a portion of respondent’s
recitation of services, “computer software consultation,
Cancellation No. 92046554
55
design for others and development,” is worded in an
extremely broad manner. These broadly worded services
overlap with the services previously rendered by petitioner
under the identical mark. Accordingly, petitioner has
established a likelihood of confusion between the marks for
the parties’ services.
Decision
The petition to cancel is granted as to the services in
Class 42, and denied as to the goods in Class 9.
Accordingly, Class 42 will be cancelled from Registration
No. 2833981 in due course.