This Opinion is not a
Precedent of the TTAB
Mailed: March 6, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Prevea Health Services, Inc.
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Serial No. 86517666
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Joseph S. Heino of Davis & Kuelthau, s.c.,
for Prevea Health, Services, Inc.
Sara N. Benjamin, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
_____
Before Zervas, Bergsman and Kuczma,
Administrative Trademark Judges.
Opinion by Bergsman, Administrative Trademark Judge:
Prevea Health Services, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark ANEW (in standard characters) for “providing personal support
services for patients and families of patients with cancer, namely, emotional
counseling and emotional support,” in Class 4.1
1 Application Serial No. 86517666 was filed on January 29, 2015, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide
intention to use the mark in commerce.
Serial No. 86517666
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The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles the registered mark YOU ANEW (standard
characters) for, “nutrition counseling; consulting services in the fields of diagnostic
medical testing and nutrition; providing a web site featuring information on health
and nutrition; counseling relating to nutrition; food nutrition consultation; medical
lifestyle counseling; providing information on maintaining a healthy lifestyle and
losing weight; counseling services in the fields of health, nutrition and lifestyle
wellness; providing weight loss program services; consulting to individuals and
communities engaged in group weight loss programs, nutrition, and weight loss,” in
Class 44, as to be likely to cause confusion.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis Ind.,
Inc., 135 S.Ct. 1293, 113 USPQ2d 2045, 2049 (2015)); see also In re Majestic Distilling
Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each
du Pont factor that is relevant and for which there is evidence of record. See M2
2 Registration No. 4118303, registered March 27, 2012.
Serial No. 86517666
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Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir.
2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB
2015) (“While we have considered each factor for which we have evidence, we focus
our analysis on those factors we find to be relevant.”). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods and/or services. See In re Chatam Int’l Inc., 380 F.2d
1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”); see also In re
i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015).
A. The number and nature of similar marks in use in connection with similar
services.
Applicant argues that because the term ANEW has been registered numerous
times and used by third parties, it is a weak term entitled to only a narrow scope of
protection or exclusivity of use.3
With respect to third-party registrations, Applicant refers to the registrations
previously cited as bars to registration that have been withdrawn. Those
registrations are listed below:
3 Applicant’s Brief, pp. 7-10 (7 TTABVUE 13-16).
Serial No. 86517666
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Mark Reg. No. Services
A NEW ALLIANCE 2987953
(Cancelled
effective
March 25,
2016)
Educational services, namely conducting
workshops in the fields of personal and
spiritual growth, in Class 41; and
Psychological counseling, namely offering
advice regarding personal and spiritual
growth; hypnotherapy services, in Class
42
AnewCare Collaborative
and design
4319025 Data management services, namely,
collecting, tracking, analyzing and
providing claims data to health care
providers related to the provision of health
care services to consumers, in Class 35;
Administration and management of an
accountable care organization, which is an
organization comprised of health care
provider participants formed for the
purpose of improving efficiency and
quality of care provided to consumers in
order to result in overall cost savings and
improved population health, in Class 36;
and
Health care services in the nature of an
accountable care organization, which is an
organization comprised of health care
provider participants formed for the basis
of improving efficiency and quality of care
provided to consumers in order to result in
overall cost savings and improved
population health, Class 44
Serial No. 86517666
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Mark Reg. No. Services
DENOVO
(the English translation
of DENOVO is “anew”)
4382715 Application service provider, namely,
hosting, managing, developing, and
maintaining software applications,
software, and web sites in the field of
health and wellness; design and
development of computer software,
websites and mobile device software
applications to track health and wellness
program for others; Computer services,
namely, creating an on-line community for
registered users to facilitate the
measurement and tracking of health and
wellness, and providing rewards for
achievement of health and wellness goals,
participate in discussions, get feedback
from their peers, form virtual communities
and engage in social networking, in Class
42; and
Design and management of health and
wellness program for others featuring the
measurement and tracking of health and
wellness through websites, mobile device
applications, and social networking, and
providing rewards for achievement of
health and wellness goals, in Class 44
Serial No. 86517666
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Mark Reg. No. Services
ANEWS 4731357 Downloadable software in the nature of a
mobile application for access to social
networks, content and images in the fields
of news and current events relating to
politics, business, technology and science,
sports, culture and arts, fashion and
lifestyle, entertainment, gaming,
psychology and self-improvement, humor,
health and fitness, cooking, and travel, in
Class 9;
Providing on-line forums for transmission
of messages among computer users
concerning news and current events
relating to politics, business, technology
and science, sports, culture and arts,
fashion and lifestyle, entertainment,
gaming, psychology and self-improvement,
humor, health and fitness, cooking, and
travel, in Class 38; and
Providing information, news and
commentary in the field of current events
relating to information in the fields of
news and current events relating to
politics, business, technology and science,
sports, culture and arts, fashion and
lifestyle, entertainment, gaming,
psychology and self-improvement, humor,
health and fitness, cooking, and travel, in
Class 41.
Registration No. 2987953 for the mark A NEW ALLIANCE has been cancelled
effective March 25, 2016 and, therefore, it has no probative value. In any event, the
mark A NEW ALLLIANCE is not similar to the mark at issue in this appeal inasmuch
as it engenders the commercial impression of a new coalition whereas the mark at
Serial No. 86517666
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issue engenders the commercial impression of a fresh start. See the discussion
regarding commercial impression in the next section.
The remaining three registrations are for services unrelated or marginally related
to those at issue in this appeal. See In re Thor Tech Inc., 90 USPQ2d 1634, 1639
(TTAB 2009) (the third-party registrations are of limited probative value because the
goods identified in the registrations appear to be in fields which are far removed from
the goods at issue); see also Key Chemicals, Inc. v. Kelite Chemicals Corp., 464 F.2d
1040, 175 USPQ 99, 101 (CCPA 1972) (discounting the probative value of third-party
use where such uses were unrelated to services at issue); SBS Products Inc. v.
Sterling Plastic & Rubber Products Inc., 8 USPQ2d 1147, 1149 n.6 (TTAB 1988)
(“[E]ven if evidence of such third-party use were submitted, it would be of no aid to
respondent herein where the third-party usage was for goods unrelated to either
petitioner's skin care products or respondent's stuffing box sealant”).
Likewise, the third-party websites are for services unrelated to the services at
issue in this appeal (e.g., ANEW Health Care Services render eldercare services,4
Anew Holistic Health and Wellness is a fitness and exercise club,5 Emerge Anew
Health & Wellness Coaching is a self-help type facility,6 Denovo Health Partners is
an investment firm in the healthcare sector,7 DeNovo Health Advocacy assists clients
4 June 3, 2016 request for reconsideration (4 TTABVUE 20).
5 June 3, 2016 request for reconsideration (4 TTABVUE 29).
6 June 3, 2016 request for reconsideration (4 TTABVUE 38).
7 June 3, 2016 request for reconsideration (4 TTABVUE 41).
Serial No. 86517666
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to navigate the health care system,8 De Novo Chiropractic & Health is a chiropractic
practice,9 and DenovoNow is a healthcare technology program10).11 This leaves three
marginally related companies:
• Anew Health Center a medical center specializing in treating illnesses and
injuries, detoxification, enzyme therapy, herbology and kinesiology;12
• Anew Wellness is an outpatient behavioral health center;13 and
• De Novo Health Care is a health care clinic in Compton, California.14
The evidence submitted by Applicant does not rise to the level of demonstrating
that third-party use of the term ANEW is so widespread as to “condition” the
consuming public, such that customers are so used to seeing marks containing the
term ANEW for “providing personal support services for patients and families of
patients with cancer, namely, emotional counseling and emotional support,”
“consulting services in the field[s] of diagnostic medical testing,” “medical lifestyle
8 June 3, 2016 request for reconsideration (4 TTABVUE 44).
9 June 3, 2016 request for reconsideration (4 TTABVUE 46).
10 June 3, 2016 request for reconsideration (4 TTABVUE 48).
11 The excerpts from the YELP website (4 TTABVUE 23-26), the YELLOWBOOK website (4
TTABVUE 27), and the DeNova Healthcare Services website (4 TTABVUE 43) do not provide
enough information to make any findings of fact.
Also, we note that none of the websites submitted by Applicant include the URL or the dates
that they were printed. See Safer Inc. v. OMS Invs. Inc., 94 USPQ2d 1031, 1039 (TTAB 2010).
Nevertheless, because Applicant provided the URLs in its list of exhibits and the Trademark
Examining Attorney did not object to Applicant’s exhibits, we consider the websites to be
stipulated into the record.
12 4 TTABVUE 28
13 4 TTABVUE 35
14 4 TTABVUE 42
Serial No. 86517666
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counseling,” and “counseling services in the fields of health, nutrition and lifestyle
wellness” that such use undermines the strength of Registrant’s mark.
Even if we assume that Applicant’s evidence of third-party use is probative that
the websites exist and that the public has been exposed to them, such evidence has
minimal probative value where it is not accompanied by evidence regarding the
extent of such use and promotion by the third parties or the consumer awareness of
the third parties and their services. Without such evidence, we cannot assess whether
third-party use has been so widespread as to have had any impact on consumer
protection. See Freedom Federal Savings & Loan Ass'n v. Heritage Federal Savings
& Loan Ass'n, 210 USPQ 227, 231 (TTAB 1981) (third-party use of marks without
more is not probative of the impact that such marks have on consumer perceptions);
cf. 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1729 (TTAB 2007).
Nevertheless, in analyzing the similarity or dissimilarity of the marks, we keep in
mind that the word “anew” is defined as “again” and is used to create the commercial
impression of a fresh start. See the discussion below.
B. The similarity or dissimilarity of the marks.
We now turn to the du Pont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567.
“Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014).
Serial No. 86517666
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“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012); see also San Fernando Electric Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem.,
972 F.2d 1353 (Fed. Cir. 1992).
Applicant is seeking to register ANEW and the mark in the cited registration is
YOU ANEW. The word “Anew” is defined as “for an additional time: AGAIN ” and “in a new or different form
.”15 Synonyms for
“anew” include “afresh, again, de novo, over.”16
The marks are similar in that they both include the term “Anew.” The marks are
different because the registered mark includes the pronoun “You.” However, the
addition of the pronoun “You” does not distinguish the marks because “You” modifies
the word “Anew” thereby highlighting the word “Anew” in Registrant’s mark. Thus,
the marks are similar in appearance and sound.
Applicant’s mark ANEW means and engenders the commercial impression “begin
again.” Registrant’s mark YOU ANEW means and engenders the commercial
15 Merriam-Webster.com (December 3, 2015 Office Action at TSDR 12-13).
16 Id. at 14.
Serial No. 86517666
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impression “you begin again.” The meaning and commercial impressions engendered
by the marks are similar.
In similar circumstances, where a registrant’s mark incorporates the applicant’s
mark, the Board and its primary reviewing court have found the marks to be similar.
See Hunter Indus., Inc. v. Toro Co., 110 USPQ2d 1651, 1660 (TTAB 2014) (applicant’s
mark PRECISION is similar to opposer’s mark PRECISION DISTRIBUTION
CONTROL) (citing In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260
(Fed. Cir. 2010) (applicant’s mark ML is similar to registrant’s mark ML MARK
LEES); see also Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406,
407 (CCPA 1967) (THE LILLY as a mark for women's dresses is likely to be confused
with LILLI ANN for women's apparel including dresses); In re United States Shoe
Corp., 229 USPQ 707, 709 (TTAB 1985) (CAREER IMAGE for women's clothing
stores and women's clothing likely to cause confusion with CREST CAREER IMAGES
for uniforms including items of women's clothing). In United States Shoe, the Board
observed that “Applicant's mark would appear to prospective purchasers to be a
shortened form of registrant's mark.” 229 USPQ at 709.
Applicant argues that Registrant is not using its mark as YOU ANEW; rather,
Registrant is using it as one word YOUANEW as part of a larger advertising slogan
(“Youanew lifestyle nutrition”).17 However, in considering the similarity or
dissimilarity between marks, we compare Applicant’s mark with the cited mark as
17 Applicant’s Brief, p. 11 (7 TTABVUE 17) (citing Registrant’s website submitted in
Applicant’s June 3, 2016 request for reconsideration at 4 TTABVUE 52).
Serial No. 86517666
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shown in the registration certificate. See B.V.D. Licensing Corp. v. Rodriguez, 83
USPQ2d 1500, 1508 (TTAB 2007); Jockey Int’l. Inc. v. Mallory & Church Corp., 25
USPQ2d 1233, 1236 (TTAB 1992); Blue Cross and Blue Shield Assoc. v. Harvard
Community Health Plan Inc., 17 USPQ2d 1075, 1077 (TTAB 1990). Further, the use
displayed in website excerpt submitted by Applicant, may not be the only way
Registrant uses YOU ANEW.
We find that Applicant’s mark ANEW is similar to the registered mark YOU
ANEW in appearance, sound, connotation and commercial impression.
C. The similarity or dissimilarity and nature of the services.
As noted above, Applicant is seeking to register its mark for “providing personal
support services for patients and families of patients with cancer, namely, emotional
counseling and emotional support.” The cited mark has been registered for, inter alia,
“consulting services in the field[s] of diagnostic medical testing,” “medical lifestyle
counseling,” and “counseling services in the fields of health, nutrition and lifestyle
wellness.”
The word “lifestyle” is defined as “the typical way of life of an individual, group,
or culture.”18 Registrant’s “medical lifestyle counseling” and “counseling services in
the fields of health, nutrition and lifestyle” is broad enough to encompass emotional
counseling and support for patients and families of patients with cancer. See In re
18 Merriam-Webster.com. The Board may take judicial notice of dictionary definitions,
including online dictionaries that exist in printed format. In re Cordua Rests. LP, 110
USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016);
Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010).
Serial No. 86517666
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Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s
broadly worded identification of ‘furniture’necessarily encompasses Registrant’s
narrowly identified ‘residential and commercial furniture.’”).
To further show that the same entities render emotional counseling and support
for patients and families of patients with cancer, as well as “consulting services in the
field[s] of diagnostic medical testing,” “medical lifestyle counseling,” and “counseling
services in the fields of health, nutrition and lifestyle wellness” under the same mark,
the Trademark Examining Attorney submitted excerpts from third-party websites
listed below:
• CareCare.org offers counseling services to “provide support, information and
resources to help you better cope with cancer”19 and “professional support services for
people affected by cervical cancer, as well as cervical cancer treatment information
and additional resources.”20
• Life With Cancer website (lifewithcancer.org) helps people face the challenges
of living with cancer by providing information, education and support” through
counseling, education, “mind body/wellness programs,” information and resources,
and referrals.21
19 December 3, 2015 Office Action (TSDR p. 19).
20 December 3, 2015 Office Action (TSDR p. 24).
21 December 3, 2015 Office Action (TSDR pp. 28-35).
Serial No. 86517666
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• Memorial Sloan Kettering Cancer Care Center (MSKCC.org) offers counselling
for cancer patients and their families, as well as rendering health care services for
cancer patients.22
• Share (sharecancersupport.org) is an association of breast and ovarian cancer
survivors who provide a support network to women affected by breast or ovarian
cancer. Its services include helping women face the emotional and practical issues
that come up with breast or ovarian cancer, including handling treatment side effects
and advice about talking to your doctor.23
• MD Anderson Cancer Center (mdanderson.org) offers counseling services to help
cancer patients and their families cope with cancer and to deal with the psychological
and social barriers to their treatment, providing information about cancer, its
symptoms, risk factors, and treatment therapies.24
• Cancer Support Community (cancersupportcommunity.org) is an association of
cancer patients and survivors that provides information regarding living with cancer
for patients, friends, and family, as well as information regarding cancer treatment,
caregivers, and managing the cost of cancer treatment.25
• The Dana-Farber Cancer Institute (dana-farber.org) offers support groups to
help cancer patients and their families regain control over their lives, explore the role
of spirituality in the illness, discover ways to eat better, practice relaxation
22 December 3, 2015 Office Action (TSDR pp. 36-46).
23 December 3, 2015 Office Action (TSDR pp. 51-53).
24 December 3, 2015 Office Action (TSDR pp. 54-57).
25 June 30, 2016 Office Action (5 TTABVUE 4-8).
Serial No. 86517666
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techniques and learn to integrate exercise into their treatment. It also offers provides
information about cancer treatments, procedures, symptom management, and
nutrition.26
•The Bladder Cancer Advocacy Network (bcan.org) offers support group services
to bladder cancer patients, survivors, caregivers and family members, as well as
providing information regarding bladder cancer and bladder cancer treatment.27
The Trademark Examining Attorney also submitted copies of use-based, third-
party registrations covering services in both the Applicant’s description of services
and the Registrant’s description of services. Third-party registrations based on use in
commerce that individually cover a number of different services may have probative
value to the extent that they serve to suggest that the listed services are of a type
that may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-1786 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988). Representative registrations, with relevant portions of the
description of services, are listed below.28
26 June 30, 2016 Office Action (5 TTABVUE 9-15).
27 June 30, 2016 Office Action (5 TTABVUE 16-31).
28 Not all of the registrations submitted by the Trademark Examining Attorney were relevant
because they did not include activities that we would consider to be in both Applicant’s
description of services and Registrant’s description of services.
Serial No. 86517666
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Mark Reg. No. Services
SIGNATURE
HOSPICE
3500968 Counselling in the field of health, namely, for
person’s living with a terminal illness; individual
and family counseling in the field of psychological
and medical counseling
Medical counseling; providing health information
SOUTHLAKE
ONCOLOGY,
P.A.
3862859 Providing personnel support services for patients
an and families of patients with cancer, namely,
emotional counseling and emotional support
Medical assistance consultancy provided by doctors
and other specialized medical personnel; providing
information in the field of cancer prevention,
screening, diagnosis and treatment
WE DO THE
LITTLE
THINGS THAT
MAKE A BIG
DIFFERENCE
3282942 Providing personal support services for families of
patients with life threatening disorders, namely,
psychosocial emotional support and community
resource integration; social work in the field of
clinical medical social work for support of people
living with a terminal illness; grief counseling
Medical counselling; providing health information;
DUKE
MEDICINE
4372828 Personal support services for families of patients,
namely, companionship, help with medical forms,
counseling and emotional support
Providing health and medical information;
assisting patients and their families to obtain
appropriate support services in the nature of home
health care and wellness counseling
Serial No. 86517666
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Mark Reg. No. Services
4154996 Providing personal and emotional support to
breast and ovarian cancer patients
Providing information concerning the causes,
detection, diagnosis, and treatment of breast
cancer and ovarian cancer
Although such registrations do not prove that the registered marks are actually
used in the marketplace on the services at issue, they at least demonstrate that a
number of companies have sought and obtained registrations of marks for use on
those services. Applicant’s contention that the services are unrelated is not borne out
by an examination of the registrations and Internet evidence discussed above.
D. Established, likely-to-continue channels of trade.
As noted above, we find that Applicant’s description of services and Registrant’s
description of services are in part identical because Registrant’s “medical lifestyle
counseling” and “counseling services in the fields of health, nutrition and lifestyle” is
broad enough to encompass Applicant’s emotional counseling and support for patients
and families of patients with cancer. Because the services described in the application
and the cited registration are in part identical, we must presume that the channels
of trade and classes of purchasers are the same. See In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed to
travel in same channels of trade to same class of purchasers); In re Yawata Iron &
Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally
identical goods, the channels of trade and classes of purchasers are considered to be
Serial No. 86517666
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the same); United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB
2014); American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011).
E. Balancing the factors.
Because the marks are similar, the services are in part identical or highly related,
and the presumption that the services move in the same channels of trade, we find
that Applicant’s mark ANEW for “providing personal support services for patients
and families of patients with cancer, namely, emotional counseling and emotional
support” is likely to cause confusion with the registered mark YOU ANEW for, inter
alia, “consulting services in the field[s] of diagnostic medical testing,” “medical
lifestyle counseling,” and “counseling services in the fields of health, nutrition and
lifestyle wellness.”
Decision: The refusal to register Applicant’s mark ANEW is affirmed.
