PreMD Inc.

Trademark Trial and Appeal Board

Apr 21, 2009

No. 77184341 (T.T.A.B. Apr. 21, 2009)

Mailed: 4/21/09

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re PreMD Inc.
________

Serial No. 77184341
_______

Danielle I. Mattessich and John A. Clifford of Merchant &
Gould for PreMD Inc.

Cimmerian Coleman, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney).
_______

Before Quinn, Kuhlke and Walsh, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

PreMD Inc. filed an application to register the mark
shown below

for “test kits for the non-invasive measurement of
cholesterol in skin tissues for use by physicians and
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser. No. 77184341
2
health care professionals in doctors’ offices, clinics, and
health care facilities” in International Class 10.1
The trademark examining attorney refused 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 goods, so resembles the
previously registered mark PREVUE (in typed form) for “in
vitro diagnostic test kits comprised of reagents for
scientific or research use” in International Class 1; “in
vitro medical diagnostic preparations; in vitro diagnostic
kits comprised of reagents for clinical laboratory use” in
International Class 5; and “diagnostic apparatus, namely
test sticks and cassettes, for medical purposes” in
International Class 10.2
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant argues that the marks are dissimilar, with
applicant placing emphasis on the letter “V” in its mark
that is displayed as a check mark, along with a star
design. The design elements in the mark, applicant
asserts, “create the impression that the goods ‘check’

1 Application Serial No. 77184341, filed May 18, 2007, alleging
first use anywhere and first use in commerce on September 30,
2005.
2 Registration No. 2914467, issued December 28, 2004.
Ser. No. 77184341
3
cholesterol and the measuring of cholesterol is a ‘stellar’
choice in preventing or controlling heart disease.”
(Brief, p. 6). As to the goods, applicant contends that
the examining attorney’s broad generalization that the
goods are “medical test kits” ignores applicant’s evidence
that the goods are different. In connection with its
argument, applicant submitted the declaration of Dr. James
Stein, a physician, who states that registrant’s goods are
an antibody assay for the purpose of detecting Lyme’s
disease. Dr. Stein offered additional details about
registrant’s actual product, further distinguishing it from
applicant’s product. Applicant also contends that the
goods are bought by sophisticated purchasers who exercise
careful thought in making their purchasing decisions.
The examining attorney maintains that the marks, as
shown in the drawings, are similar and that the goods, as
identified, are closely related. With respect to the
goods, the examining attorney points out that registrant’s
identification is broadly worded, with no limitation on
what medical condition or disease the test kits are used to
diagnose. Thus, as identified, the examining attorney
asserts that registrant’s goods encompass diagnostic kits
that test for cholesterol. Given the similarities between
the marks and the goods, the examining attorney contends
Ser. No. 77184341
4
that even sophisticated purchasers are likely to be
confused as to source.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). 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 (CCPA 1976).
With respect to the marks, we must compare the marks
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 (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
Ser. No. 77184341
5
as to the source of the services offered under the
respective marks is likely to result.
In comparing the marks and PREVUE in terms of
sound, they are phonetic equivalents and, thus, are
identical in sound. The marks also convey essentially the
same meaning, that is, the test kits give a diagnostic
“preview” of an individual’s medical condition.3 Although
the meaning is suggestive, the record is devoid of any
third-party uses or registrations of similar marks in the
medical test kit field.
As to appearance, because of the special form of
applicant’s mark, and the different spellings of the same
word comprising the marks, they are specifically different
in appearance. We acknowledge that applicant’s mark
includes a readily recognizable check mark that forms the
letter “V” as well as a star design. We find, however,
that these design features are subordinate to the literal
word portion of the mark. See 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,

3 In this connection, we take judicial notice of the dictionary
definition of the term “preview”: “to see beforehand; a
statement giving advance information.” Webster’s Third
International Dictionary of the English Language (unabridged ed.
1993).
Ser. No. 77184341
6
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. Indeed,
this type of analysis appears to be unavoidable.”). Where
both a word and design features comprise the mark (as in
applicant’s mark), then the word is normally accorded
greater weight because the word is likely to make an
impression upon purchasers, would be remembered by them,
and would be used by them to request the goods. In re
Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987);
and Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ
461, 462 (TTAB 1985). See also Giant Food, Inc. v.
Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390
(Fed. Cir. 1983).
We also find, based on the similarities discussed
above, that the marks engender very similar overall
commercial impressions.
In sum, the identity in sound and meaning, and the
similarity in commercial impression, outweigh the
differences in appearance. The similarity between the
marks weighs in favor of a finding of likelihood of
confusion.
Applicant contends that the marks, as actually used
and encountered by purchasers, are different. Not only are
Ser. No. 77184341
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the marks as actually used different in appearance, but,
applicant asserts, registrant’s mark appears with its house
mark “Wampole.” In this connection, applicant requested,
in its appeal brief, that the Board take judicial notice of
the specimens of use in the file of the cited registration.
Firstly, the request for judicial notice is denied. Beech
Aircraft Corp. v. Lightning Aircraft Co., 1 USPQ2d 1290
(TTAB 1986) (no judicial notice of application and/or
registration files where no copies thereof are filed).
Secondly, the fact that registrant’s house mark appears
with the registered mark as actually used in the
marketplace is of no consequence in our likelihood of
confusion analysis. This is because we must compare the
marks as shown in the respective drawings; simply put,
registrant’s purported house mark “Wampole” is not part of
the registered mark.
With respect to the goods, it is well settled that the
question of likelihood of confusion must be determined
based on an analysis of the goods recited in applicant’s
application vis-à-vis the goods identified in the cited
registration. In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993); and Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1783 (Fed. Cir. 1992). Where the goods in the application
Ser. No. 77184341
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at issue and/or in the cited registration are broadly
identified as to their nature and type (as in the case of
the cited registration), 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 identification of goods encompasses not
only all the goods of the nature and type described
therein, but that the identified goods are offered in all
channels of trade which would be normal therefor, and that
they would be purchased by all potential buyers thereof.
In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
It is also well established that the goods of the
parties need not be similar 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 goods of the parties are related in some manner,
and/or that the conditions and activities surrounding the
marketing of the goods 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 Hilson Research, Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423 (TTAB 1993); and In re
International Telephone & Telegraph Corp., 197 USPQ 910,
Ser. No. 77184341
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911 (TTAB 1978). The issue, of course, is not whether
purchasers would confuse the goods, but rather whether
there is a likelihood of confusion as to the source of the
goods. In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
Keeping the above legal principles in mind, we must
compare applicant’s “test kits for the non-invasive
measurement of cholesterol in skin tissues for use by
physicians and health care professionals in doctors’
offices, clinics, and health care facilities” to
registrant’s “diagnostic apparatus, namely test sticks and
cassettes, for medical purposes”; “in vitro medical
diagnostic preparations; in vitro diagnostic kits comprised
of reagents for clinical laboratory use”; and “in vitro
diagnostic test kits comprised of reagents for scientific
or research use.” In making our comparison, it is
significant that the identification of goods in the cited
registration is broadly worded to the extent that it does
not indicate the specific medical condition for which the
test kits are used. Thus, the goods, as identified, are
presumed to encompass diagnostic test kits for all kinds of
medical conditions, including the measurement of
cholesterol.
Ser. No. 77184341
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The goods are presumed to move through similar trade
channels to the same classes of purchasers, including
physician offices, clinics and other health care
facilities.
In view of the above similarities, these du Pont
factors relating to the goods weigh in favor of a finding
of likelihood of confusion.
In attempting to distinguish the goods, applicant
relies on the actual nature of registrant’s goods.
According to Dr. Stein, registrant’s goods are used by
medical laboratories and physician’s offices to diagnose
Lyme disease. Dr. Stein opines that confusion between the
marks is not likely “because the fields of use are
dramatically different (measurement of skin sterols to
assist with cardiovascular disease risk prediction vs.
detecting an antibody to the causative agent of Lyme
disease) and the nature of the tests (a 5 minute test
performed on the hand of a patient vs. a lab-based
immunoassay).”
The problem with this type of argument is that, as
indicated earlier, the comparison of the goods in our
likelihood of analysis must be based on the goods as
identified in the registration, and not on evidence that
illustrates the goods for which registrant may actually use
Ser. No. 77184341
11
its mark. Thus, applicant’s attempt to impermissibly limit
registrant’s recited goods by extrinsic evidence is
unavailing. In re Bercut-Vandervoort & Co., 229 USPQ 763,
764 (TTAB 1986).
Given the nature of the goods, we accept applicant’s
assertion that the respective test kits may be the subject
of sophisticated purchases. Nevertheless, even careful
purchasers are likely to be confused when encountering
similar goods sold under similar marks. As stated by our
primary reviewing court, “[t]hat the relevant class of
buyers may exercise care does not necessarily impose on
that class the responsibility of distinguishing between
similar trademarks for similar goods. ‘Human memories even
of discriminating purchasers ... are not infallible.’” In
re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49,
50 (Fed. Cir. 1986) quoting Carlisle Chemical Works, Inc.
v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112
(CCPA 1970). Therefore, the fact that the purchasers are
well-educated health care professionals who may exercise
care before purchasing these goods does not mean there can
be no likelihood of confusion. In the present case, the
similarity between the marks and the similarity between the
goods as identified outweigh any sophisticated purchasing
decision. See HRL Associates, Inc. v. Weiss Associates,
Ser. No. 77184341
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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].
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.