Scripps Health

Trademark Trial and Appeal Board

Dec 28, 2006

No. 76077292 (T.T.A.B. Dec. 28, 2006)

Mailed:
December 28, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Scripps Health
________

Serial No. 76077292
_______

Katherine M. Hoffman of Luce, Forward, Hamilton & Scripps
LLP for Scripps Health.

Rebecca Smith, Trademark Examining Attorney, Law Office 110
(Chris A. F. Pedersen, Managing Attorney).
_______

Before Hohein, Walters, and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Scripps Health, a California corporation, has filed an
application to register the mark shown below for the
following services:
Educational services, namely, conducting
seminars, conferences and workshops in the field
of health care, in Class 41; and,

Health care services, in Class 42.1

1 Application Serial No. 76077292 filed on June 26, 2000.
Applicant claims first use anywhere as of March 16, 1998, and
first use in commerce as of April 1, 1998, and describes its mark
as follows: “The mark consists of the word ‘SCRIPPS’ next to
three stylized people forming a circle.”
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Serial No. 76077292
2

Registration has been refused under Section 2(d) of
the Lanham Act, 15 U.S.C. §1052(d). The Trademark
Examining Attorney contends that applicant’s mark, when
applied to applicant’s services, so closely resembles the
two registered marks set forth below (both of which are
owned by The Scripps Research Institute) as to be likely to
cause confusion:
1. Registration No. 2099045 for the mark shown below
for “scientific and medical research services”;2
and,

2 Registration No. 2099045, issued on September 23, 1997. The
exclusive right to use “Research Institute” is disclaimed.
Serial No. 76077292
3

2. Registration No. 1546838 for the mark SCRIPPS
IMMUNOLOGY REFERENCE LABORATORY for “medical
laboratory and research services.”3

When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs.
We affirm.
Applicant has argued that there is no likelihood of
confusion for the following reasons:
1. When considered in their entireties, the marks as
a whole are dissimilar. The addition of the
descriptive words (“Research Institute” and
“Immunology Reference Laboratory”) provides
“valuable information to the consumer about the
nature of the parties’ respective services” and
features that distinguish the marks. In
addition, because “Scripps” is a surname, it is
weak mark that is not entitled to a broad scope
of protection;
2. The services are not similar. The Examining
Attorney’s “sweeping” conclusion that the
services of the applicant and the registrant are
related is incorrect because “the health care

3 Registration No. 1546838 issued on July 4, 1989 under the
provisions of Section 2(f) of the Lanham Act. The exclusive
right to use “Immunology Reference Laboratory” is disclaimed.
Serial No. 76077292
4
field is vast and varied, and includes countless
niche fields that have very little in common with
one another.” (Applicant’s Brief, p. 5);
3. Because the services of the registrant and the
applicant are targeted to different end-users,
the same consumers will not encounter the marks
of the registrant and the applicant. Therefore,
the services of the registrant and the applicant
move in different channels of trade; and,
4. Despite over 13 years of simultaneous use,
applicant is not aware of any reported instances
of actual confusion.
In support of its arguments, applicant submitted the
following evidence:
1. Excerpts from its website, including a “Scripps
History” which provides information regarding
numerous related entities and affiliates that
incorporate the “Scripps” name in their
trademarks and trade names. The “About Scripps”
section provides the following information:
Affiliated with the health care
delivery network are The Scripps
Research Institute (TSRI) and the
Scripps Foundation for Medicine
and Science (SFMS). TSRI is one
of the country’s largest private
not-for-profit research
Serial No. 76077292
5
organizations, recognized
internationally for its basic
biomedical research.

2. Excerpts from registrant’s website corroborating
(a) that registrant was one of the entities
derived from the Scripps Metabolic Clinic founded
in 1924 by Emily Browning Scripps, and (b) that
registrant is recognized for its research in
immunology, molecular and cellular biology,
neurosciences, and other specialized medical
fields; and,
3. In response to the first Trademark Office Action,
applicant claimed ownership of Registration No.
1545762 for the mark RESEARCH INSTITUTE OF
SCRIPPS CLINIC for “scientific and medical
research services.”4
In support of her arguments that the applicant’s mark
so closely resembles registrant’s marks as to be likely to
cause confusion, the Examining Attorney submitted fourteen
use-based trademark registrations for both health care
services and medical research services and nine use-based

4 Registration No. 1545762 was registered to Scripps Clinic and
Research Foundation and assigned to applicant. The assignment
was recorded on November 6, 1995 at reel 1406, frame 0846. The
Scripps Clinic and Research Foundation also assigned one of the
cited registrations (Registration No. 1546838 for the SCRIPPS
IMMUNOLOGY REFERENCE LABORATORY) to registrant. That assignment
was recorded on November 6, 1995 at reel 1406, frame 0851.
Serial No. 76077292
6
trademark registrations for both medical research services
and educational services in the field of healthcare.
Our determination under Section 2(d) is based on an
analysis of all the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In the case sub
judice, the record consists of the application, the cited
registrations, the excerpts from the websites of applicant
and registrant, and the third-party registrations.

A. The marks of applicant and registrant are similar.

The similarity or dissimilarity of the marks are
analyzed in their entireties as to appearance, sound,
connotation and commercial impression. In re E.I. du Pont
de Nemours & Co., supra. While marks must be compared in
their entireties, it is not improper to accord more or less
weight to a particular feature of a mark. In re National
Data Corporation, 753 F.2d 1056, 24 USPQ 749, 751 (Fed.
Cir. 1983). That a particular feature of a mark is
descriptive with respect to the products at issue justifies
giving less weight to that portion of the mark. In re
National Data Corporation, supra. In Registration No.
2099045 for the mark THE SCRIPPS RESEARCH INSTITUTE and
Serial No. 76077292
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Design and in Registration No. 1546838 for the mark SCRIPPS
IMMUNOLOGY REFERENCE LABORATORY, the terms “Research
Institute” and “Immunology Reference Laboratory” are
descriptive. Not only has applicant disclaimed the
exclusive right to use the terms “Research Institute” and
“Immunology Reference Laboratory”, but applicant has
conceded that those terms are descriptive. (Applicant’s
Brief, p. 4). Thus, because the terms “Research Institute”
and “Immunology Reference Laboratory” are descriptive,
those terms will not be regarded as dominant and will
generally be given less weight than the more arbitrary
parts of the marks (i.e., the name “Scripps”).
The significance of the “Scripps” name in registrant’s
marks is reinforced by its location as the first word in
the marks.5 Presto Products Inc. v. Nice-Pak Products Inc.,
9USPQ2d 1895, 1897 (TTAB 1988)(“it is often the first part
of a mark which is most likely to be impressed in the mind
of a purchaser and remembered”).

5 With respect to Registration No. 2099045 for the mark THE
SCRIPPS RESEARCH INSTITUTE and Design, the word “The” does not
have any trademark significance. “The” is a definite article.
When it is used before a noun, it denotes a particular person or
thing. Dictionary.com (v 1.0.1). See, In re Universal Package
Corporation, 222 USPQ 344, 345 (TTAB 1984); Conde Nast
Publications Inc. v. The Redbook Publishing Company, 271 USPQ
356, 357 (TTAB 1983). Thus, as used in “The Scripps Research
Institute,” the word “The” simply emphasizes the “Scripps” name.
Serial No. 76077292
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The word portions of registrant’s marks incorporate
the entirety of the word portion of applicant’s mark.
Likelihood of confusion is often found where the entirety
of one mark is incorporated within another. Johnson
Publishing Co. v. International Development Ltd., 221 USPQ
155, 156 (TTAB 1982)(EBONY for cosmetics and EBONY DRUM for
hairdressing and conditioner); In re Denisi, 225 USPQ 624,
626 (TTAB 1985) (PERRY’S PIZZA for restaurant services
specializing in pizza and PERRY’S for restaurant and bar
services); In re South Bend Toy Manufacturing Company,
Inc., 218 USPQ 479, 480 (TTAB 1983) (LIL’ LADY BUGGY for
toy doll carriages and LITTLE LADY for doll clothing).
The word portion of a composite mark (i.e., SCRIPPS,
THE SCRIPPS RESEARCH INSTITUTE, and SCRIPPS IMMUNOLOGY
REFERENCE LABORATORY) is usually considered the dominant
part of a mark because it is more easily remembered and
used in communications. Neither applicant’s stylized
humans forming a circle, nor registrant’s molecule design,
will be used by in asking for or discussing the services
and it is unlikely that the design elements will be used in
textual materials (by applicant, registrant, or third-
parties) because it would be impractical to use the design
features. CBS Inc. v. Morrow, 708 F.2d 157 9, 218 USPQ
198, 200 (Fed. Cir. 1983); In re Appetito Provisions Co.
Serial No. 76077292
9
Inc., 3 USPQ2d 1553, 1554 (TTAB 1987). Accordingly, the
design elements are unlikely to be remembered when the
consumer is confronted with substantially similar word
marks. In re Decombe, 9 USPQ2d 1813, 1814 (TTAB 1988).
With respect to applicant’s argument that registrant’s
marks are entitled to only a narrow scope of protection
because “Scripps” is a surname, we note that Registration
No. 1546838 for the mark SCRIPPS IMMUNOLOGY REFERENCE
LABORATORY is registered under the provisions of Section
2(f) of the Lanham Act. Having acquired distinctiveness,
the mark SCRIPPS IMMUNOLOGY REFERENCE LABORATORY is
entitled to the same trademark protection as any other
validly registered trademark. E. I. du Pont de Nemours &
Co. v. Societe Dupont, 161 USPQ 489, 491 (TTAB 1969).
While there are obvious differences between
applicant’s mark SCRIPPS and Design and registrant’s marks
THE SCRIPPS RESEARCH INSTITUTE and Design and SCRIPPS
IMMUNOLOGY REFERENCE LABORATORY, the design elements and
descriptive wording do not detract from the similarity
created by the use of the “Scripps” name which is the
dominant portion of both applicant’s mark and registrant’s
marks. We are satisfied that when the marks are taken as a
whole, they are similar in sound, appearance, meaning, and
commercial impression.
Serial No. 76077292
10
B. The services of applicant and registrant are related.

Applicant is seeking to register its mark for the
following services:
Educational services, namely, conducting
seminars, conferences and workshops in the field
of health care, in Class 41; and,

Health care services, in Class 42.
Registrant has registered its marks for “scientific and
medical research services” and “medical laboratory and
research services” in Class 42.
We start with the well-settled proposition that it is
not necessary that the services of the applicant and
registrant be similar or even competitive to support a
finding of likelihood of confusion. Likelihood of
confusion may be found if the respective services are
related in some manner and/or if the circumstances
surrounding their marketing are such that they would be
likely to be encountered by the same persons under
conditions that could give rise to the mistaken belief that
they emanate from the same source. In re Pollio Dairy
Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); Seaguard
Corporation v. Seaward International, Inc., 223 USPQ 48, 51
(TTAB 1984).
The Examining Attorney submitted fourteen use-based
registrations for both health care services and medical
Serial No. 76077292
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research services and nine use-based registrations for both
educational services in the field of health care and
medical research services. The third-party registrations
submitted by the Trademark Examining Attorney have
probative value to the extent that they serve to suggest
that the services listed therein are of a kind that emanate
from a single source. In re Infinity Broadcasting
Corporation, 60 USPQ2d 1214, 1217-1218 (TTAB 2001); 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). The fact that the third-party marks
have been adopted and registered for health care services,
educational services in the field of health care, and
medical research services is probative of the fact that
those services are related.
Applicant’s information about the history of the
various “Scripps” entities that may be related and
rendering services that emanate from a single source does
not help its argument for registration. Applicant has not
argued, nor proven, that the relationship between applicant
and registrant, if any, is so close as to obviate any
confusion. Accordingly, we do not undertake a “unity of
control” analysis. In re Wella A.G., 5 USPQ2d 1359, 1361
(TTAB 1988). The fact with which we must deal with sub
Serial No. 76077292
12
judice is that the records of the U.S. Patent and Trademark
Office show that applicant’s “Scripps” mark and
registrant’s “Scripps” marks are owned by different
entities.
The excerpts from the websites submitted by applicant
evidence that the services of applicant and registrant are
of a type that emanate from the same source. The “Scripps
History” shows that various Scripps entities were derived
from the Scripps Memorial Hospital and evolved into related
entities with different specialties. In fact, the “About
Scripps” excerpt cited above states that the registrant is
affiliated with the health care delivery network.
Applicant itself is the owner of Registration No.
1545762 for the mark RESEARCH INSTITUTE OF SCRIPPS CLINIC
for “scientific and medical research.” Applicant’s
argument that healthcare services and educational services
in the field of healthcare are not related to scientific
and medical research appears contrived in light of its
ownership of a registration for “scientific and medical
research” and it is not well taken.
In view of the third-party registrations, applicant’s
website indicating that registrant’s medical research
services are affiliated with applicant’s health care
delivery network, and applicant’s ownership of a trademark
Serial No. 76077292
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registration for “scientific and medical research”, we find
that applicant’s health care services and educational
services in the field of health care and registrant’s
scientific and medical research services are related.

C. The services of applicant and registrant move in the
same channels of trade.

It is well-settled that the issue of likelihood of
confusion between applied-for and registered marks must be
determined on the basis of the goods or services as they
are identified in the involved application and cited
registrations, rather than on what any evidence may show as
to the actual nature of the products, their channels of
trade and/or classes of purchasers. Canadian Imperial Bank
of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987); In re Elbaum, 211 USPQ 639,
640 (TTAB 1981). Accordingly, applicant’s argument that
there is no overlap between its services and the services
rendered by the registrant is not persuasive because there
is no restriction in the description of services as to
either the application or the registrations. We must
therefore consider the applicant’s services and the
registrant’s services as if they were being rendered in all
of the normal channels of trade to all of the normal
Serial No. 76077292
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purchasers for such services. Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, supra; Toys R Us v. Lamps R
Us, 219 USPQ 340, 343 (TTAB 1983).
Because there are no restrictions in applicant’s
description of services, the “educational services, namely,
conducting seminars, conferences, and workshops in the
field of health care,” are not limited to “providing health
care directly to patients, and to provide (sic) health
related information directly to the patient.” (Applicant’s
Brief, p. 6). Applicant’s services may include seminars,
conferences, and workshops in the field of medical
research, including biomedical research. In addition,
persons involved in scientific and medical research may
also be involved and familiar with health care services.
Thus, based on the description of services, applicant’s
health care services and educational services in the field
of health care may be rendered to consumers involved with
scientific and medical research and, therefore, the
channels of trade and class of purchasers overlap.

D. The lack of any reported instances of actual confusion
is not a significant likelihood of confusion factor.

Applicant argues that there has been no actual
confusion between applicant’s mark and registrant’s marks
Serial No. 76077292
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despite thirteen years of simultaneous use. However, the
fact that an applicant in an ex parte proceeding is unaware
of any instances of actual confusion is generally entitled
to little probative weight in the likelihood of confusion
analysis, inasmuch as the Board in such cases has no way to
know whether the registrant is unaware of any instances of
actual confusion, nor is it usually possible to determine
whether there has been any significant opportunity for
actual confusion to have occurred. In re Opus One Inc., 60
USPQ2d 1812, 1817 (TTAB 2001); In re Jeep Corporation, 222
USPQ 333, 337 (TTAB 1984); In re Barbizon International,
Inc., 217 USPQ 735, 737 (TTAB 1983). In this case, even
those relevant consumers who were familiar with the past
affiliation between applicant and registrant may very well
have associated the respective services of the applicant
and registrant with a single source, making confusion more
likely. Accordingly, applicant’s argument regarding the
lack of actual confusion is of no probative value in our
likelihood of confusion analysis.
We accordingly find that there is a likelihood of
confusion between SCRIPPS and Design used in connection
with “health care services” and “educational services,
namely, conducting seminars, conferences, and workshops in
the field of health care” and the marks THE SCRIPPS
Serial No. 76077292
16
RESEARCH INSTITUTE and Design for “scientific and medical
research services” and SCRIPPS IMMUNOLOGY RESEARCH
LABORATORY for “medical laboratory and research services.”
Decision: The refusal to register is affirmed.