Queen Elizabeth II Health Sciences Centre

Trademark Trial and Appeal Board

Jul 20, 2004

No. 76371942 (T.T.A.B. Jul. 20, 2004)

Mailed:
July 20, 2004

UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Queen Elizabeth II Health Sciences Centre
________
Serial No. 76371942
_______
Raymond A. Flansberry of Flansberry, Menard & Associates
for Queen Elizabeth II Health Sciences Centre.
Nicholas K.D. Altree, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
_______
Before Seeherman, Hanak and Holtzman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Queen Elizabeth II Health Sciences Centre, a Canadian
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register RISE & SHINE and
design, as shown below, for services identified, as
amended, as "cooperative advertising and marketing program
in the field of health care."1
1 Application Serial No. 76371942, filed February 19, 2002,
based on an asserted bona fide intention to use the mark in
commerce. The application as originally filed identified the
services as " marketing services whereby participants/licensees
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76371942
2
Registration has been refused pursuant to Section 2(d) of
the Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant's mark so resembles the mark RISE 'N SHINE
NORTHEAST CARE CENTER INC. and design, as shown below, with
the words CARE CENTER INC. disclaimed, and previously
registered for "medical services namely, providing in-
patient and out-patient medical care for the mentally
retarded and developmentally disabled,"2 that, if used in
connection with the identified services, is likely to cause
confusion or mistake or to deceive.
pay a fee to be associated with the Rise & Shine Program."
Applicant amended its identification in response to the Examining
Attorney's objection that the original identification was
indefinite.
2 Registration No. 1459652, issued September 29, 1987; Section 8
affidavit accepted; Section 15 affidavit received. The lining
shown in the mark on the drawing is a feature of the mark and
does not indicate color.
Ser No. 76371942
3
Applicant filed both an appeal brief and a reply to
the Examining Attorney's appeal brief. Applicant did not
request an oral hearing.
It is noted that applicant's appeal brief does not
conform to the requirements of Trademark Rule 2.142(b)(2)
in that it is 26 pages long, and the rule specifically
states that, without prior leave of the Board, an appeal
brief may not exceed 25 pages. Section 1203.01 of the TTAB
Manual of Procedure states that "If an applicant files a
brief that exceeds the twenty-five page limit without prior
leave of the Board, the brief will not be considered,
although the failure to file a conforming brief will not be
treated as a failure to file a brief which would result in
the dismissal of the appeal." In view of this stated
policy, normally we would give applicant's main brief no
consideration. However, the Board failed to notify
applicant, in its acknowledgment of applicant's brief, that
the brief was unacceptable, and forwarded it to the
Examining Attorney, who in turn considered it and, indeed,
quoted from it. In these circumstances, the Board will
consider the brief,3 but applicant and its counsel are
3 It is also noted that applicant has included an extra double
space between the paragraphs of its brief, and that if applicant
had not done so it would have been within the 25-page limit.
Although the Board considers the number of pages submitted,
without regard to whether the applicant could have condensed the
Ser No. 76371942
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cautioned, in terms of any future appeals, that the 25-page
limit rule will be strictly enforced.
There are some additional points we must consider with
respect to applicant's briefs. In its main brief,
applicant has given the numbers for what it asserts to be
the "hits" produced by a search of the Patent and Trademark
Office database for the words "rise" and "shine," and has
listed, by mark, class, registration number and owner, what
it asserts to be various registered RISE AND SHINE marks.
The Examining Attorney has objected. The Examining
Attorney's objections are well taken. The submission of a
list of registrations is insufficient to make them of
record. See In re Duofold Inc., 184 USPQ 638 (TTAB 1974).
Accordingly, we have not considered the statement regarding
the "hits," nor have we considered the listing of marks.
We also note that in the last pages of its brief
applicant has cited to several "unpublished" Board cases,
providing only a serial number and decision date, and no
USPQ cite. The Board gives no consideration to decisions
that are not marked "citable as precedent." General Mills
Inc. v. Health Valley Foods, 24 USPQ2d 1270 (TTAB 1992).
type or margins, in terms of determining whether an applicant has
complied with the page limitation, it is obvious that applicant
could have submitted an appeal brief of the appropriate length
without deleting any material.
Ser No. 76371942
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Applicant has attached three exhibits to its reply
brief. Trademark Rule 2.142(d) provides that the record in
an application should be complete as of the filing of the
notice of appeal. These exhibits are manifestly untimely,
and have not been considered.
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 Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). 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 Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
We turn first to a consideration of the marks, and the
basic proposition that, in articulating reasons for
reaching a conclusion on the issue of likelihood of
confusion, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
Ser No. 76371942
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conclusion rests on a consideration of the marks in their
entireties. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985). In this case, we find that RISE
& SHINE is the dominant element of applicant's mark, and
RISE 'N' SHINE is the dominant element of the cited mark.
Although both marks contain differing design elements, it
is the words that must be accorded greater weight because
it is by these words that purchasers would refer to or
request the services. In re Appetito Provisions Co., 3
USPQ2d 1553 (TTAB 1987). Although the registered mark also
contains the phrase NORTHEAST CARE CENTER INC., this phrase
appears in much smaller letters than the words RISE 'N'
SHINE and, given that the registrant is Northeast Care
Center Inc., people will regard this portion as a trade
name or house mark, with RISE 'N' SHINE as the trademark
for the particular services. As a result, when they see
the "trademark" portion RISE & SHINE without the trade
name, they will simply view it as a variant of the
registered mark.
In terms of appearance, although there are different
design elements and, as noted, the trade name Northeast
Care Center Inc. in the registrant's mark, the prominent
presence of the words RISE & SHINE/RISE 'N SHINE in each
mark gives both marks a similar appearance. Further, these
Ser No. 76371942
7
words are essentially identical in pronunciation, since the
ampersand in applicant's mark is the phonetic and
connotative equivalent of the 'N in the cited mark.
Although the trade name in the registered mark does, of
course, add additional syllables, it does not take away
from the phonetic similarity of the main portions of the
marks. Further, it is likely that many consumers will
shorten the cited mark and refer to it as simply RISE 'N'
SHINE.
In terms of connotation, the dominant portions of the
marks are identical. As previously discussed, the
additional trade name in the registered mark and the
designs do not change the connotation of these words. In
short, both marks convey very similar commercial
impressions.
Applicant has asserted that the cited registration is
entitled to a limited scope of protection because it
consists of common words, rather than invented ones. This
is a misstatement of the law. Although invented terms are
entitled to a broad scope of protection, so too are
arbitrary marks, even if they consist of common words, and
under this criteria we find the cited RISE 'N SHINE and
Ser No. 76371942
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design mark to be an arbitrary and inherently distinctive
mark for the services at issue.4
This brings us to a consideration of the services. We
first correct certain inaccuracies in applicant's argument.
Applicant has tried to distinguish the services based on
the geographic areas in which it asserts they are rendered.
Specifically, applicant contends that the registrant's
trademark "is associated with a single health center" in
Ohio, while applicant's trademark is used in connection
with "over ninety (90) Atlantic Canadian health care
centers." Brief, p. 6. In its reply brief, applicant
states that the identification in the cited registration is
inaccurate because, according to information applicant has
found from registrant's web site, its services are directed
to persons with mental retardation and developmental
disabilities throughout Northeast Ohio, and that the
services are "primordially [sic] daily services consisting
of residential care and/or homecare services to aid in
habilitation [sic] such as providing assistance with
4 As previously noted, applicant's mere listing of third-party
RISE & SHINE marks is not sufficient to make them of record.
Moreover, even if they were of record, they would not demonstrate
that RISE 'N SHINE is a weak mark for either the services
identified in registrant's registration or applicant's
registration. The classes of those registrations indicate that
they are for goods which appear to be totally unrelated to these
services, e.g., Class 3 (cosmetics) and Class 30 (foods).
Ser No. 76371942
9
bathing, showers, grooming, dressing, meal preparation,
housekeeping, laundry and providing medication and dietary
supervision." Reply brief, p. 14.
Applicant has not properly submitted any evidence with
respect to the registrant's services. More importantly, it
is well established that the question of likelihood of
confusion must be determined based on an analysis of the
mark as applied to the goods and/or services recited in
applicant's application vis-à-vis the goods and/or services
recited in the cited registration, rather than what the
evidence shows the goods and/or services to be. See
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, NA,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); In re
William Hodges & Co., Inc., 190 USPQ 47 (TTAB 1976).
Because the registrant owns a geographically unrestricted
registration, and applicant seeks a geographically
unrestricted registration, we must assume that the parties'
services may be rendered throughout the United States, not
just, respectively, in a section of Ohio or in Atlantic
Canada. Therefore, the services could be rendered in close
proximity to each other. Moreover, because applicant's
advertising and marketing program is not restricted as to
particular health care fields, we must assume that it would
also encompass advertising and marketing with respect to
Ser No. 76371942
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the field of medical care for the mentally retarded and
developmentally disabled.
We recognize that there is a difference between
medical services and the service of providing a cooperative
advertising and marketing program in the field of health
care. At first blush, it would appear that advertising
services would be directed to a different class of
consumers than health care services, such that there would
not be an opportunity for confusion to occur. See Local
Trademarks Inc. v. The Handy Boys Inc., 16 USPQ2d 1156
(TTAB 1990). That is, the customers for advertising
services in the field of health care would normally be
medical personnel and health care facilities, while medical
services such as those identified in the cited registration
would be directed to mentally retarded and developmentally
disabled persons and their families and doctors.
However, in the present case, applicant has explained
that it provides:
A marketing program which allows
businesses and charitable organizations
to form partnerships with each other to
market an image, product or service for
their mutual benefit, all the while
creating an opportunity to service and
benefit all health centers in Atlantic
Canada. The only way healthcare
organizations are involved is to profit
from the Applicant's program which is
designed to provide focused access to
Ser No. 76371942
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cause related marketing opportunities.
The Applicant's goal is to support
health care communities across Canada
by offering a channel to build
awareness of the needs of health care
facilities in Canada. Consumers may
support Canadian health care by
purchasing products or services marked
with the Rise & Shine logo. The
Applicant provides resources and
funding while at the same time
addressing business-marketing
objectives. The Applicant targets and
services businesses that would like to
enter a marketing program which will
help them sell more of their products
(which products are not necessarily in
the health field) because the trademark
(the Rise & Shine logo) works as an
incentive to buy, indicating to
customers that the participating
businesses are associated with a
program that benefits healthcare.
Response dated December 18, 2002.
Thus, applicant's services are not directed solely to
healthcare facilities to help them in advertising their
healthcare services. On the contrary, the primary focus of
applicant's services appears to be companies which are not
in the healthcare field. Essentially, these companies are
solicited to be part of applicant's advertising and
marketing program. They then mark their products with
applicant's logo or use the logo in connection with their
services, in order to inform customers that they are
participants, and customers are encouraged to purchase the
Ser No. 76371942
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products or services because such purchases benefit health
care facilities.
As a result, the general public is not only exposed to
applicant's services, but they are participants in the
cooperative advertising and marketing program offered by
applicant. These consumers, knowing of the registrant's
medical services offered under the RISE 'N SHINE mark, are
likely to assume that applicant's advertising and marketing
program identified by the RISE & SHINE mark is designed to
raise money for the registrant's operation, and that the
advertising and marketing program is sponsored by or
associated with the registrant.
We also note (contrary to the situation in Local
Trademarks Inc., supra, that the Examining Attorney has
submitted evidence showing the relatedness between medical
services and advertising services. The Examining Attorney
has made of record numerous third-party registrations
showing that a single mark has been registered for
marketing or advertising services and for medical services.
See, for example, Reg. No. 2364369 for, inter alia,
marketing consultation and medical services, namely,
cardiology and cardiovascular care services; Reg. No.
2310529 for business management and advertising services in
the field of health care and medical services; Reg. No.
Ser No. 76371942
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2436390 for, inter alia, cooperative advertising and
marketing services for medical offices; providing general
clinical medical services and providing specialized
clinical and surgical services in the field of pain
medicine and pain management; and Reg. No. 2621497 for
advertising agency and providing medical information in the
field of pain; general health care services. Third-party
registrations which individually cover a number of
different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Accordingly, we find that applicant's use of the
applied-for mark for its identified services is likely to
cause confusion with the cited registration.
In reaching this conclusion, we wish to make it clear
that we have not treated applicant's services as being
health care services, as applicant suggests the Examining
Attorney has. Although applicant obviously renders such
services, they are not the services which are the subject
of the current application. We are very much aware that
applicant's identified services are "cooperative
advertising and marketing program in the field of health
care," and that such services are different from the
Ser No. 76371942
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medical services identified in the cited registration.
However, it is not necessary that the goods or services of
the parties be similar or competitive, or even that they
move in the same channels of trade to support a holding of
likelihood of confusion. It is sufficient that the
respective goods or services are related in some manner,
and/or that the conditions and activities surrounding the
marketing of the goods or services are such that they would
or could be encountered by the same person under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same producer. In re International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Finally, we are not persuaded by applicant's argument
that confusion is not likely because the respective
services are purchased with care. As noted, the general
public are participants in applicant's advertising and
marketing program. Whether or not they are actually users
of the registrant's medical services, they may decide to
purchase products in the belief that they are helping
registrant's operations, and thus their confusion is
relevant to our determination. Because of the similarity
of the marks, these consumers are likely to assume they
Ser No. 76371942
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identify services associated with or sponsored by the same
source.
Decision: The refusal of registration is affirmed.