Reproductive Medicine Associates of New Jersey, LLC

Trademark Trial and Appeal Board

Jan 15, 2019

87042698 (T.T.A.B. Jan. 15, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: January 15, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Reproductive Medicine Associates of New Jersey, LLC
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Serial No. 87042698
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Harris A. Wolin of Myers Wolin LLC,
for Reproductive Medicine Associates of New Jersey, LLC
John T. Billings, Trademark Examining Attorney, Law Office 113,1
Odette Bonnet, Managing Attorney.2
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Before Ritchie, Lykos, and Kuczma,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Reproductive Medicine Associates of New Jersey, LLC (“Applicant”) seeks to
register on the Principal Register the standard character mark ARTEMIS for
“Computer software platforms for use by fertility healthcare providers for the purpose
of accessing patient electronic medical records” in International Class 9 and
“Platform as a service (PAAS) featuring computer software platforms for use by

1 Trademark Examining Attorney N. Gretchen Ulrich handled the prosecution of the
application. The appeal brief was written by Examining Attorney John T. Billings.
2 Ms. Bonnet has since retired from the Trademark Office.
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fertility healthcare providers for the purposes of accessing patient electronic medical
records” in International Class 42.3
Registration was refused as to both classes under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s applied-for mark so
resembles the registered mark ARTEMIS HEALTH also in standard characters on
the Principal Register with HEALTH disclaimed for “Software as a service (SAAS)
services featuring software, namely, for analysis, monitoring, report generation,
planning, risk and expense management and decision making regarding health care
information and utilization of employees” in International Class 42,4 that it is likely
to cause confusion or mistake or to deceive.
Applicant’s appeal of the final refusal is fully briefed.5 For the reasons explained
below, we reverse the refusal to register as to both classes of goods and services.
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See
also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). There is no mechanical test for determining likelihood of confusion and “each

3 Application Serial No. 87042698, filed May 19, 2016, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
4 Registration No. 5037107, registered September 6, 2016.
5 As per Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), the Board has not considered the
Internet evidence Applicant submitted with its reply brief not properly made of record during
prosecution. See, e.g., In re Midwest Gaming & Entertainment LLC, 106 USPQ2d 1163, 1165
n.3 (TTAB 2013) (new evidence submitted with reply brief is “untimely and therefore not part
of the record for this case”); In re HSB Solomon Associates LLC, 102 USPQ2d 1269, 1274
(TTAB 2012) (printouts submitted with reply brief not considered).
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case must be decided on its own facts.” du Pont, 177 USPQ at 567. In any likelihood
of confusion analysis, however, two key considerations are the similarities between
the marks, the first du Pont factor, and the similarities between the goods and
service, the second factor. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). As will become evident in the discussion
below, the second du Pont factor, supported by the third and fourth, plays a critical
role in this appeal.
To state the obvious, the marks ARTEMIS and ARTEMIS HEALTH, when
compared in their entireties, are similar in appearance, sound, connotation and
commercial impression. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). Indeed,
Applicant did not address this first du Pont factor in its brief. “Artemis,” the name of
“a Greek moon goddess often portrayed as a virgin huntress,”6 is arbitrary in relation
to Applicant’s and Registrant’s goods and services. With regard to the cited mark, we
note that “it is often the first part of a mark which is most likely to be impressed upon
the mind of a purchaser and remembered.” Palm Bay Imps., 73 USPQ2d at 1692. See
also Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988).
In addition, the descriptive word HEALTH in Registrant’s mark is disclaimed.
Disclaimed matter that is descriptive of or generic for a registrant’s services is

6 The Board grants the Examining Attorney’s request to take judicial notice of the definition
of “Artemis” obtained from the online version of Merriam-Webster Dictionary. See In re
Jimmy Moore LLC, 119 USPQ2d 1764, 1768 (TTAB 2016) (judicial notice of definitions from
Merriam-Webster Online Dictionary at www.merriam-webster.com).
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typically less significant or less dominant when comparing marks. See In re Dixie
Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l
Data Corp., 224 USPQ at 752. We therefore find that the dominant portion of the
cited mark ARTEMIS HEALTH is ARTEMIS, making it highly similar to Applicant’s
mark consisting solely of this arbitrary term. See, e.g., Coca-Cola Bottling Co. v. Jos.
E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (finding
BENGAL LANCER and design and BENGAL confusingly similar).
The crux of this appeal therefore involves a comparison of the goods and services
as they are identified in the involved application and cited registration, the second
du Pont factor. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052
(Fed. Cir. 2018); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comp. Servs.
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) and Hewlett-Packard Co.
v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002). Our
analysis is complicated by the fact that the precise nature of Registrant’s SAAS is
unclear. Applicant and the Examining Attorney offer dueling interpretations
regarding the scope and intended users of Registrant’s identified services. The
Examining Attorney contends that the final portion of Registrant’s identification, “…
decision making regarding health care information and utilization of employees,”
denotes two separate and distinct SAAS designed for entirely different functions and
consumers. In the Examining Attorney’s view, a proper reading of Applicant’s
services includes not one, but two separate services: (1) “Software as a service (SAAS)
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services featuring software, namely, for analysis, monitoring, report generation,
planning, risk and expense management and decision making regarding health care
information,” and (2) “Software as a service (SAAS) services featuring software,
namely, for analysis, monitoring, report generation, planning, risk and expense
management and decision making regarding utilization of employees.” Examining
Attorney’s Brief, 6 TTABVUE 18. Consistent with this reading, the Examining
Attorney’s third-party registration and Internet evidence concentrates on the “first”
SAAS identified in the cited registration.
By contrast, Applicant interprets the identification in the cited registration as
limited to use by employers to manage employee benefit costs, making the function
distinct from Applicant’s computer software platforms and PAAS which are meant to
be used by fertility healthcare providers and physicians to manage individual patient
medical records. According to Applicant, the intended consumers of Applicant’s and
Registrant’s goods and services “face divergent legal requirements, ethical
responsibilities, and technological needs; their offerings are clearly not
interchangeable.” Applicant’s Brief, p. 5; 4 TTABVUE 6. In Applicant’s view, the only
common characteristic shared by the involved goods and services is that “they both
run on computers and relate tangentially to healthcare.” Id. at 6; 4 TTABVUE 7.
The grammatical structure of Registrant’s identification is not a model of clarity.
In addition, the services are technical in nature. For these reasons, it is appropriate
to examine extrinsic evidence to determine the exact function and scope of
Registrant’s identified SAAS. If an identification of goods or services is technical or
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vague and requires clarification, extrinsic evidence of use may be considered to
determine the meaning of the identification. Edwards Lifesciences Corp. v. VigiLanz
Corp., 94 USPQ2d 1399, 1410 (TTAB 2010) (citing In re Trackmobile, 15 USPQ2d
1152, 1154 (TTAB 1990)). When confronted with a vague identification, the Board in
Trackmobile cautioned that
… when the description of goods for a cited registration is
somewhat unclear, as is the case herein, it is improper to
simply consider that description in a vacuum and attach all
possible interpretations to it when the applicant has
presented extrinsic evidence showing that the description
of goods has a specific meaning to members of the trade.
(internal citations omitted). … it is not proper to rely
simply upon abstract reasoning to give this somewhat
vague term a broad meaning absent countervailing
extrinsic evidence showing that it is entitled to such a
broad meaning.
15 USPQ2d at 1154. To that end, we highlight the following excerpts from
Registrant’s website at www.artemishealth.com properly made of record by Applicant
during prosecution:

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See August 18, 2017 Response to Office Action pp. 9-13. When we examine the
excerpts from Registrant’s website, we see that Registrant’s identified SAAS is
designed to assist employers in tracking the use of employee health care benefits in
an effort to more effectively manage and reduce healthcare costs. The data analytics
generated by Registrant’s software evaluates employee decision-making in
connection with employee health benefits, allowing the employer to see the categories
of spending that may be high at both the individual employee and group level. For
this reason, we disagree with the Examining Attorney’s reading of Registrant’s
identification as setting forth two separate SAAS performing two distinct functions.
Rather, Registrant’s software is limited to the employer benefits arena, rendering
none of the Examining Attorney’s supporting evidence relevant. In contrast,
Applicant’s computer software platform and PAAS are limited to “use by fertility
healthcare providers for the purpose of accessing patient electronic medical records”
i.e. the actual medical records of individual patients under the care of a fertility
healthcare provider. Clearly this falls outside the purview of Registrant’s identified
SAAS.
The only true similarity between Applicant’s and Registrants’ goods and services
are that they all fall under the general category of computer software. Based on the
record, the functions of Applicant’s and Registrant’s goods and services as identified
in the involved application and cited registration are fundamentally different. See,
e.g., In re Princeton Tectonics, Inc., 95 USPQ2d 1509, 1510 (TTAB 2010) (“… the mere
fact that both types of goods at issue here emit and provide light is not a sufficient
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basis for us to conclude that the goods are related. The goods, as identified, are
sufficiently different in their uses to require proof that they are related.”). Thus the
second du Pont factor weighs against finding a likelihood of confusion.
In further regard to Registrant’s identification, as discussed above, we find that
the involved goods and services are necessarily marketed in different trade channels
to different consumers. Applicant’s and Registrant’s goods and services are not the
typical consumer products sold in the traditional wholesale or retail outlets (i.e. brick-
and-mortar stores, online websites or retailers) to the average consumer or even the
general public. Rather, the products and services at issue here are highly specialized
types of computer software. Applicant’s identified computer software platform and
PAAS are restricted to “fertility healthcare providers” who presumably are relatively
knowledgeable in their field and exercise care when choosing the most appropriate
patient health care records software. Likewise, employers shopping for Registrant’s
identified SAAS are also expected to exercise a relatively higher degree of care and
knowledge when making purchasing decisions. See, e.g., Electronic Design & Sales
Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir.
1992) (“sophistication is important and often dispositive because sophisticated
consumers may be expected to exercise greater care;” finding no likelihood of
confusion resulting from the contemporaneous use of E.D.S. and EDS despite the fact
that “the two parties conduct business not only in the same fields but also with some
of the same companies.”). Thus, the third and fourth du Pont factors also weigh
against finding a likelihood of confusion.
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In sum, we have carefully considered all of the evidence made of record, as well as
all of the arguments related thereto, including any evidence and arguments not
specifically discussed in this opinion. The marks are similar in sound, appearance,
connotation and commercial impression. However, this is outweighed by the fact that
the identifications of the involved application and cited registration show that the
involved goods and services are highly specialized and perform different, unrelated
functions; that they are marketed in non-overlapping trade channels to different
consumers; and that the intended users are relatively knowledgeable and likely to
exercise a high degree of care in making purchasing decisions. Simply put, the record
before us fails to establish that the circumstances surrounding the marketing of
Applicant’s and Registrant’s goods and services are such that relevant purchasers
would mistakenly believe that the respective goods and services originate from the
same source, even if the same, inherently distinctive component ARTEMIS is used
on both. The mere fact that Applicant’s and Registrant’s goods and services fall under
the same general product category is insufficient alone to show a likelihood of
confusion.

Decision: The Section 2(d) refusal to register Applicant’s mark is reversed.