United Wound Healing P.S.

Trademark Trial and Appeal Board

Sep 10, 2019

87504866 (T.T.A.B. Sep. 10, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 10, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re United Wound Healing P.S.
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Serial No. 87504866
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Shannon M. Jost of Stokes Lawrence, P.S.,
for United Wound Healing P.S.
Salima Parmar Oestreicher, Trademark Examining Attorney, Law Office 108,
Stephen Berk, Managing Attorney.
_____

Before Kuczma, Heasley and English,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
United Wound Healing P.S. (“Applicant”) seeks registration on the Principal
Register of the mark WOUND SYNERGY, (standard character mark), for:
Providing temporary use of a web-based software
application for use in electronic health record (EHR)
management, namely, for use in increasing clinical
collaboration, quality and efficiencies by facilitating shared
access to electronic records and documents in the
healthcare industry in International Class 42.1

1 Application Serial No. 87504866 was filed on June 26, 2017, based upon Applicant’s claim
of first use and first use in commerce of the mark in September 2016. “WOUND” is
disclaimed.
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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), due to a likelihood of
confusion with the mark EYESYNERGY (standard character mark) in Registration
No. 3212495 owned by March Holdings, Inc. (Registrant), for:
Providing temporary use of non-downloadable computer
software over the internet for the administration of
healthcare, in International Class 42.2
When the refusal was made final, Applicant appealed and requested
reconsideration. Subsequent to the Examining Attorney’s denial of the request for
reconsideration, the appeal was resumed. After considering all arguments and
evidence filed, we affirm the refusal to register.
I. Likelihood of Confusion
Our determination under § 2(d) is based on an analysis of all probative facts in
evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012);
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1973).
“‘Not all of the DuPont factors are relevant to every case, and only factors of
significance to the particular mark need be considered.’” Cai v. Diamond Hong, Inc.,
901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (quoting In re Mighty Leaf
Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)). However, all of the
DuPont factors that are of record must be considered, even though they are not

2 Registration No. 3212495 issued on February 27, 2007; renewed.
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necessarily of similar weight or relevant in every case. In re Guild Mortg. Co., 912
F.3d 1376, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods or services. See In re
i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed.
Cir. 2002)); 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.”).
A. Similarity of the Services, Channels of Trade and Customers
We turn first to the DuPont factor involving the similarity of the services, keeping
in mind that determining likelihood of confusion is based on the identification of the
services as stated in the application and registration at issue, not on extrinsic
evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d
1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 123 USPQ2d at 1749).
Applicant’s services are identified as:
providing temporary use of a web-based software
application for use in electronic health record (EHR)
management, namely, for use in increasing clinical
collaboration, quality and efficiencies by facilitating shared
access to electronic records and documents in the
healthcare industry in International Class 42,
and Registrant’s services are identified as:
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providing temporary use of non-downloadable computer
software over the internet for the administration of
healthcare, in International Class 42.
Our consideration of the scope of Applicant’s services must be based on the language
used in the identification of services in its application. Extrinsic evidence such as that
in the Declaration of Ryan Dirks, Applicant’s Chief Executive Officer, may not be
used to supplement the scope of the identification of services.3
The word “administration” found in Registrant’s identification of services is
defined as “[t]he act or process of administering, especially the management of a . . .
large institution.”4 Therefore, Registrant’s software for the administration of
healthcare encompasses Applicant’s software for “use in electronic health record
(EHR) management.” Inasmuch as Registrant’s more broadly defined administration
services encompass Applicant’s more narrowly described management services, the
services may be considered legally identical. See, e.g., In re i.am.symbolic, llc, 127
USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun
Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Inter IKEA Sys. B.V. v. Akea,
LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports
Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

3 See Applicant’s Appeal Brief p. 9 (10 TTABVUE 14) referring to the Declaration of Ryan
Dirks, attached to the March 16, 2018 Response to Office Action, TSDR 51-52.
Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions
and orders on appeal are to the Board’s TTABVUE docket system.
4 See April 16, 2018 Final Office Action, TSDR at 10.
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The Examining Attorney submits additional evidence consisting of webpages from
numerous third-party websites showing that the same entity commonly provides
Registrant’s type of administrative software, and Applicant’s type of electronic health
record management software in the healthcare industry and markets these services
under the same brand name or mark:
April 16, 2018 Final Office Action:
•https://www.plexishealth.com/benefitadministration-soft
ware/ showing that Plexis’s “administration [platform]
software empowers members, providers, health plans, and
Third-party Administrators (TPAs) to connect,
communicate, and share data in real-time.” at TSDR 13
(12-21);
•http://landing.athenahealth.com/cap_clinicals%20?cmp=
10282439 showing athenahealth providing software for
administrative purposes (“we take on burdensome
administrative tasks”) and EHR management (“Most
Usable EHR”) at TSDR 23, 25 (22-25);
•https://www.harrishealthcare.com/oursolutions/electroni
c-health-record/ showing that Harris Healthcare “makes it
easy with software solutions designed to enable care
coordination and communication,” including an “electronic
health record platform” and “enterprise scheduling” for
administrative tasks such as “speed[ing] up
reimbursement” at TSDR 26-27 (26-29);
•https://www.open-emr.org/ showing that OpenEMR offers
a “software solution for medical practices” as a “source for
electronic health records and medical practice
management,” including administrative tasks such as
“scheduling [and] medical billing” at TSDR 38-40, 43 (38-
44);
•https://www.discovercloud.com/blog/kinnser-software-inc
-review-the-source-for-health-agency-software/ showing
that Kinnser Agency Manager is “meant to be a complete
home health software solution addressing Points of care
needs, billing, and administration.” The software also
Serial No. 87504866
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allows “accurate note taking at the point of care” and
“secure document transfer.” at TSDR 55, 57 (53-65);
November 5, 2018 Request for Reconsideration Denied:
•https://www.drchrono.com/ehr/practice-management/
showing that DrChrono’s “cloud-based solution allows you
to access your practice management platform anytime. . . .
Unlike other Electronic Health Records platforms,
DrChrono can be customized to your workflow.” The
website also notes that “[t]here are a lot of important
processes to manage a practice – administrative tasks,
schedules, patients, medical billing – it all needs to be
managed seamlessly, the way your practice needs it.
DrChrono offers a level of customizability like no other
management system.” at TSDR 4-10;
•https://www.advancedmd.com/ showing that Advanced-
MD offers a “medical office software platform . . . making
tasks simpler & information more accessible,” and that the
platform has a “smart EHR Dashboard” and other
management offerings at TSDR 12-13, 17 (12-18);
•https://www.nextgen.com/products-and-services/nextgen-
office showing that NextGen Office is a “cloud-based EHR
solution with fully integrated practice management, claims
clearinghouse, and patient portal designed for independent
practices and billing services,” and that the integrated
platform is designed to “reduce administrative burden of
documentation, and improve patient care with easy-to-use
data entry.” at TSDR 19-23;
•https://www.kareo.com/ehr showing that Kareo Clinical
offers a “fully integrated, cloudbased EHR” and the
software allows consumers to set “task lists” and “share
important medical and billing information.” at TSDR 24-
25, 27-28, 33, 35, 37 (24-37);
•https://prognocis.com/ showing that PrognoCIS offers
“EHR software” that provides a number of features for
practice management and administrative tasks, including
for “office staff [to] send text appointment reminders, lab
results, and communicate with patients’ other referring
physicians.” at TSDR 38-40 (38-42);
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•https://www.carecloud.com/ehr/ showing that CareCloud
offers “EHR software” providing a “practice management
system for a single clinical, administrative, and financial
solution.” CareCloud’s “easy-to-use, integrated practice
management, electronic health record and revenue cycle
solution will help your practice prosper.” at TSDR 43-44
(43-49);
This third-party evidence confirms the interrelatedness of administrative and EHR
management services, showing the same entity commonly offers Registrant’s and
Applicant’s types of services under the same mark. At the very minimum, Applicant’s
services and Registrant’s services are closely related. See, e.g., In re Davey Prods. Pty
Ltd., 92 USPQ2d 1198, 1202-03 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91
USPQ2d 1266, 1271-72 (TTAB 2009).
Because there are no limitations as to channels of trade or classes of purchasers
in either Registrant’s or Applicant’s identification of services, it is presumed that
Registrant’s services and Applicant’s services move in all channels of trade normal
for those services, and that they are available to all classes of purchasers for those
services. See Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir.
1983); Paula Payne Prods. Co. v. Johnson Publ’g Co., Inc., 473 F.2d 901, 177 USPQ
76, 77-78 (CCPA 1973); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
The Examining Attorney’s third-party website evidence discussed above also
confirms that such services are in fact offered for sale through the same channels of
trade, i.e., on the same websites, to the same classes of customers. Thus, customers
encountering Applicant’s services and Registrant’s services sold under similar marks
are likely to believe the services emanate from the same source. See Octocom Sys. v.
Hous. Comput. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1788 (Fed. Cir. 1990)
Serial No. 87504866
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(purchasers would likely be confused when goods as closely related as modems and
computer programs are sold under virtually identical marks).
In view of the foregoing, we find that Applicant’s services are closely related to
and encompassed by Registrant’s services, that they travel in the same channels of
trade, and that they are provided to the same classes of customers, all of which
supports a likelihood of confusion under the second and third DuPont factors.
B. Number and Nature of Similar Marks in Use on Similar Services

As Applicant correctly states, evidence that the consuming public is exposed to
third-party use of similar marks in connection with similar services, “is relevant to
show that a mark is relatively weak and entitled to only a narrow scope of protection.”
See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005) (finding the component term
SMOKING HOT in the marks I’M SMOKING HOT and SMOKIN’ HOT SHOW TIME
to be “somewhat weak” based in part on evidence of third-party use of the term on
similar cosmetics goods, noting that such uses “tend to show consumer exposure to
third-party use of the term on similar goods”); Mini Melts, Inc. v. Reckitt Benckiser
LLC, 118 USPQ2d 1464, 1470 (TTAB 2016) (noting evidence that third parties had
adopted marks that were the same as or similar to opposer’s mark for use in
connection with food products “may show that a term carries a highly suggestive
connotation in the industry and, therefore, may be considered weak”);5 TRADEMARK
MANUAL OF EXAMINING PROCEDURE (TMEP) § 1207.01 (d)(iii) (October 2018).

5 Applicant’s Appeal Brief pp. 8, 11-12 (10 TTABVUE 13, 16-17).
Serial No. 87504866
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Under the sixth DuPont factor, the Federal Circuit has stated that “evidence of
third-party use of similar marks on similar goods ‘can show that customers have been
educated to distinguish between different marks on the basis of minute distinctions.”’
Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium
Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (quoting Juice
Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir.
2015)). “The weaker [a registrant’s] mark, the closer an applicant’s mark can come
without causing a likelihood of confusion and thereby invading what amounts to its
comparatively narrower range of protection.” Juice Generation, 115 USPQ2d at 1674.
Applicant contends that there are a “multitude of third party registrations for
marks which also contain the term ‘SYNERGY,’ and which are used in connection
with a wide variety of goods and services, including goods and services relating to
medical software of the health care industry in general.”6 While Applicant notes that
its search of the USPTO’s Trademark Electronic Search System (TESS) reveals 617
live applications and registrations for marks incorporating the term “SYNERGY,” of
which 68 records specifically involve marks in International Class 42, copies of such
registrations and applications were not submitted into evidence.7 Instead, Applicant
submitted a list of 68 representative registrations for “third party marks that
incorporate the designation ‘SYNERGY’ in connection with goods and services

6 March 16, 2018 Response to Office Action at TSDR 10.
7 Additionally, the third-party applications have no probative value because they evidence
only the fact that they were filed; they do not evidence use or that the marks, in fact, co-exist.
See In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1745 (TTAB 2018); Interpayment Servs.
Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003).
Serial No. 87504866
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specifically in International Class 042”8 and asserts that “[o]f those 68 records,
numerous marks are used in connection with services relating to medical software or
the health care industry at large.”9 However, submitting a list of registrations is not
sufficient to make them of record. To make the list of third-party registrations of
record, copies of the registrations, either a copy of the paper USPTO record, or a copy
taken from the electronic records of the USPTO, should be submitted. See, e.g., In re
Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012)
(mere listing of third-party registrations in brief insufficient to make them of record);
In re Jump Designs LLC, 80 USPQ2d 1370, 1372-73 (TTAB 2006). Inasmuch as these
third-party registrations were only contained in a list of registrations, they are not in
evidence.
Applicant also submitted copies of third-party registration certificates and
TRADEMARK STATUS & DOCUMENT RETRIEVAL (TSDR) printouts “for numerous marks
incorporating the term ‘SYNERGY’ as used in connection with services relating to
medical software, technical software or the health care industry in general.”10 Third-

8 March 16, 2018 Response to Office Action at TSDR 10.
9 Applicant’s Appeal Brief p. 11 (10 TTABVUE 16); March 16, 2018 Response to Office Action,
Exhibit A at TSDR 10, 14-15.
10 These third-party registrations were submitted with Applicant’s Response to March 16,
2018 Office Action, Exhibit B at TSDR 10, 17-50; and its Request for Reconsideration TSDR
17-25, Exhibit 1 at TSDR 29-115.
With respect to the Registrations submitted as evidence, Reg. Nos. 4006934 for
MEDSYNERGIES & Design, 4105186 for EMPIRISTAT BIOSTATISTICAL SYNERGY &
Design; and 4120153 for SYNERGYHEALTH, were not considered as they have been
cancelled and are of no probative value. See Action Temporary Servs. Inc. v. Labor Force Inc.,
870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“[A] cancelled registration does not
provide constructive notice of anything”).
Serial No. 87504866
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party registration evidence may show that a term carries a highly suggestive or
descriptive connotation in the relevant industry and therefore may be considered
somewhat weak. Juice Generation, 115 USPQ2d at 1675; Jack Wolfskin, 116 USPQ2d
at 1136. However, Applicant’s arguments based on the third-party registrations are
not persuasive. The evidence largely comprises third-party registrations for marks
containing the term “SYNERGY” for different or unrelated services, which are of
limited probative value in determining the strength of its mark. See In re
i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017)
(disregarding third-party registrations for other types of goods where the proffering
party had neither proven nor explained that they were related to the goods in the
cited registration).
Unlike Juice Generation, where the third-party evidence involved the very same
restaurant services covered by the marks at issue, and Jack Wolfskin, where the
third-party evidence involved the very same clothing covered by the marks in
question, here Applicant has only introduced two third-party registrations that cover
arguably related services.11 The two third-party registrations for marks that contain

11 Reg. Nos. 5006079 for MEDSYNERGIES & Design for services including providing on-line
non-downloadable software for the integration of health care delivery information technology
systems for others in Int. Class 42; and 4197183 for ADVANCING SYNERGY for providing
temporary use of online non-downloadable software for tele health applications, namely,
patient engagement, virtual outreach, navigation support, and health and disease
management and projections, for improving public health, health care and research though
screening, diagnosis, treatment and care; computer software development in the field of tele
health applications for improving public health, health care and research through screening,
diagnosis, treatment and care in Int. Class 42.
Serial No. 87504866
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the term SYNERGY in arguably related fields are so few in number, and fall well
short of the “voluminous” and “extensive” evidence presented in Jack Wolfskin, 116
USPQ2d at 1136 (at least fourteen relevant third-party uses or registrations of
record), or of that in Juice Generation, 115 USPQ2d at 1673 n.1 (at least twenty-six
relevant third-party uses or registrations of record). Moreover, the existence on the
register of other seemingly similar marks does not provide a basis for registering
Applicant’s mark. AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ
268, 269 (CCPA 1973) (“The existence of [third party] registrations is not evidence of
what happens in the market place or that customers are familiar with them . . . .”);
In re Total Quality Grp., Inc., 51 USPQ2d 1474, 1477 (TTAB 1999).
Ultimately, these two third-party registrations fail to show that in the context of
the non-downloadable software for healthcare management and administration
services in question, customers could rely on the differences in Applicant’s mark to
distinguish it from the mark in the cited registration. See also i.am.symbolic, llc, 123
USPQ2d at 1751 (disregarding third-party registrations for goods in other classes
where the proffering party “has neither introduced evidence, nor provided adequate
explanation to support a determination that the existence of I AM marks for goods in
other classes, … support a finding that registrants’ marks are weak with respect to
the goods identified in their registrations”).
Thus, there is no meaningful evidence that the cited mark is so weak or otherwise
entitled to such a narrow scope of protection that customers would be careful in
distinguishing Registrant’s mark EYESYNERGY from Applicant’s mark WOUND
Serial No. 87504866
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SYNERGY. Even assuming that Registrant’s mark is weak for the services identified
in its registration, marks deemed weak are still entitled to protection against the
registration by a subsequent user of a similar mark for closely related services. See
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109
(CCPA 1974); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010); In
re Chica Inc., 84 USPQ2d 1845, 1850 (TTAB 2007); In re Colonial Stores, Inc., 216
USPQ 793, 795 (TTAB 1982).
Thus, the third-party registrations submitted by Applicant do not establish that
“SYNERGY” is weak or diluted for the relevant services rendering this factor neutral.
C. Similarity of the Marks
It is well settled that marks are compared in their entireties for similarities in
appearance, sound, connotation, and commercial impression. In re Viterra, 101
USPQ2d at 1908; du Pont, 177 USPQ at 567. “Similarity in any one of these elements
may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, 126
USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB
2014)); In re White Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988).
Applicant argues that its mark differs from the cited mark due to the inclusion of
the words “WOUND” and “EYE-,” respectively, as the first words in its mark and the
cited mark.12 Instead of obviating the similarities between the marks, those terms
create a similar mental impression of health-related software services due to their
association with one’s body as supported by the definitions of “wound” as “an injury

12 Applicant’s Appeal Brief pp. 9-10 (10 TTABVUE 14-15).
Serial No. 87504866
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to the body” and “eye” as “a specialized light-sensitive sensory structure of animals
that in nearly all vertebrates, . . . is the image-forming organ of sight.”13 “WOUND”
and “EYE-,” when combined with the term “SYNERGY,” convey a similar impression
related to one’s body and/or health. Thus, when viewing the marks, prospective
customers will likely perceive the terms “WOUND” and “EYE-” as describing the
healthcare field to which the services relate as opposed to identifying different
providers of the services.
The meaning or commercial impression of Registrant’s and Applicant’s marks are
not altered or otherwise affected by whether they are two words as in Applicant’s
mark WOUND SYNERGY, or one word as in Registrant’s mark EYESYNERGY. The
lack of a space in Registrant’s mark does not mean that customers would not
recognize and understand that Registrant’s mark is composed of the terms EYE- and
-SYNERGY, which are two recognized terms. Therefore, the absence of a space
between EYE- and -SYNERGY in Registrant’s mark does not significantly change its
impression and is not sufficient to distinguish Applicant’s mark from Registrant’s
mark. See Mini Melts v. Reckitt Benckiser, 118 USPQ2d at 1470 (MINI MELTS
essentially identical to MINIMELTS).

13 September 25, 2017 Office Action TSDR 9-10, 25-26 from Merriam-Webster Dictionary: the
definition of “wound” is “an injury to the body (as from violence, accident, or surgery) that
typically involves laceration or breaking of a membrane (such as the skin) and usually
damage to underlying tissues.” ; and
the definition of “eye” is “a specialized light-sensitive sensory structure of animals that in
nearly all vertebrates, most arthropods, and some mollusks is the image-forming organ of
sight; especially: the nearly spherical usually paired hollow organ of sight in vertebrates that
is filled with a jellylike material, is lined with a photosensitive retina, and is lodged in a bony
orbit in the skull.” 9/25/2017.
Serial No. 87504866
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One feature of a mark may be more significant or dominant in creating a
commercial impression. See In re Viterra, 101 USPQ2d at 1908; In re Nat’l Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Matter that is descriptive of or
generic for a party’s goods or services is typically less significant or less dominant in
relation to other wording in a mark. See In re Detroit Athletic, 128 USPQ2d at 1050
(citing In re Dixie Rests., 41 USPQ2d at 1533-34); Anheuser-Busch, LLC v. Innvopak
Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc.,
380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
Although the first words in Applicant’s mark and Registrant’s mark are different,
they are weak terms, given the nature of the services in the medical field. Applicant
has disclaimed the word “WOUND” due to its descriptiveness. The word “EYE” in the
registered mark is also very suggestive, if not descriptive, when used in connection
with healthcare services. Inasmuch as “WOUND” and “EYE-” create a similar
commercial impression of health-related services due to their association with injury
to the body and a body part, “WOUND” and “EYE-” are less significant in terms of
affecting the commercial impressions of Applicant’s and Registrant’s marks and
distinguishing them. Accordingly, Applicant’s argument based on differences in
commercial impressions created by its mark versus Registrant’s mark focusing on the
terms WOUND and EYE- is not persuasive.
Both marks contain the more distinctive word “synergy” as the second word. The
definitions of “synergy” include “[t]he interaction of two or more agents or forces so
that their combined effect is greater than the sum of their individual effects” and
Serial No. 87504866
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“[c]ooperative interaction among groups, especially among the acquired subsidiaries
or merged parts of a corporation, that creates an enhanced combined effect.”14 Thus,
the term “synergy” is at most suggestive for Applicant’s and Registrant’s software
having no descriptive meaning in relation to either of their services.
While Applicant’s and Registrant’s marks are not identical, when comparing
marks, the test is not whether the marks can be distinguished in a side-by-side
comparison, but rather whether the marks are sufficiently similar in terms of their
overall commercial impression that potential purchasers who encounter the marks
would be likely to assume a connection between the parties. Cai v. Diamond Hong,
127 USPQ2d at 1801 and In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB
2016) (each quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012)); In re Viterra, 101 USPQ2d at 1908; In re Davia,
110 USPQ2d at 1813.
Although Applicant’s mark WOUND SYNERGY and Registrant’s mark
EYESYNERGY begin differently, they are similar in overall meaning and commercial
impression. Thus, the similarities in the marks outweigh their differences.
D. Sophistication of Relevant Consumers
Last, Applicant argues that the sophistication of the relevant consumers weighs
against a likelihood of confusion, noting that the Board has previously acknowledged
the sophistication of professional health care consumers.15

14 See April 16, 2018 Final Office Action at TSDR 8, AHDictionary.com 4/16/2018.
15 Applicant’s Appeal Brief pp. 7-8, 10-11 (10 TTABVUE 12-13, 15-16) citing Carefirst of Md.,
Inc. v. FirstHealth of the Carolinas, Inc., 77 USPQ 2d 1492, 1503-04 (TTAB 2005), aff’d, 479
Serial No. 87504866
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Applicant contends that “the evidence of record shows that the relevant
consumers—registered nurses and licensed nursing home administrators who deal
with patients needing advanced wound care—are especially sophisticated and
specialized medical professionals who are accustomed to exercising great care in
making their purchasing decisions” concluding that such customers are “unlikely to
be confused between goods or services relating to eyes (the cited mark) and those
relating to wounds (Applicant’s mark).”16 In support of this position, Applicant
submits the Declaration of Ryan Dirks, its Chief Executive Officer, who states that
Applicant’s “goods and services are marketed to consumers in the health care
industry who are trained professionals working in the field of wound care, namely,
registered nurses and licensed nursing home administrators, and such consumers are
necessarily careful and sophisticated in their choices.”17
Applicant cites In re N.A.D., Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985),
for the proposition that because only sophisticated purchasers exercising great care

F.3d 825, 81 USPQ2d 1919 (Fed. Cir. 2007), where the Board found no likelihood of confusion
between two marks noting that in purchasing health care services, even ordinary consumers
are likely to exercise greater care and will know with whom they are dealing.
16 Applicant’s Appeal Brief pp. 10-11 (10 TTABVUE 16-17) citing to the Declaration of Ryan
Dirks in the March 16, 2018 Response to Office Action at TSDR 51-52.
17 Declaration of Ryan Dirks attached to the March 16, 2018 Response to Office Action at
TSDR 51-52. The “Declaration of Ryan Dirks” is not an acceptable declaration. A declaration
must include the statement that “all statements made of [his] own knowledge are true and
all statements made on information and belief are believed to be true.” In addition, the
declaration must warn the signatory that willful false statements and the like are punishable
by fine or imprisonment, or both (18 U.S.C. §1001). 35 U.S.C. §25(b). Trademark Rule 2.20
requires that the warning contain the additional language that such statements may
jeopardize the validity of the application or submission or any registration resulting
therefrom. A declaration that does not attest to an awareness of the penalty for perjury is
unacceptable. See 35 U.S.C. §25; In re Stromsholmens Mekaniska Verkstad AB, 228 USPQ
968, 970 (TTAB 1986); TMEP § 804.01(b).
Serial No. 87504866
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would purchase the relevant hospital and medical equipment (i.e., the goods involved
in that case), there would be no likelihood of confusion merely because of the
similarity between the registrant’s mark NARCO and applicant’s mark
NARKOMED.18 However, in reversing the refusal of registration, the Federal Circuit
found that the existence of a consent agreement between the owner of the cited mark
and the applicant, when taken together with all of the other facts, there would be no
likelihood of confusion. 224 USPQ at 971. The facts in N.A.D. are very different from
the facts in this appeal where there is no evidence of a consent between Registrant
and Applicant, and other factors that support a likelihood of confusion.
While a mark may be recognized by trained professionals in the industry for the
goods and services offered under that mark, here, the similarity between the marks
and the relatedness of the services “outweigh any presumed sophisticated purchasing
decision.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1413 (TTAB 2015) (citing HRL
Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989) aff’d 902 F.2d
1546, 14 USPQ2d 1840 (Fed. Cir. 1990)); see also Stone Lion Capital Partners v. Lion
Capital, 110 USPQ2d at 1163-64.
Additionally, even careful sophisticated customers who are knowledgeable as to
the goods or services are not necessarily knowledgeable in the field of trademarks or
immune to source confusion arising from the use of confusingly similar marks on or
in connection with the goods or services. See In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1690 (Fed. Cir. 1993) (indicating that “even sophisticated purchasers

18 Applicant’s Appeal Brief p. 7 (10 TTBVUE 12).
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can be confused by very similar marks”); In re Davey Prods. Pty Ltd., 92 USPQ2d
1198, 1204 (TTAB 2009); In re Cynosure Inc., 90 USPQ2d 1644, 1647 (TTAB 2009);
In re N.A.D. Inc., 221 USPQ 1115, 1118 (TTAB 1984) (“Even technically trained
purchasers who are extremely familiar with expensive machinery may be confused
when similar marks are used with respect to the same goods.”); see also In re Research
and Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (That 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.).
Accordingly, the sophistication of purchasers is a neutral factor in our likelihood of
confusion determination.
II. Conclusion
Applicant’s applied-for mark WOUND SYNERGY and Registrant’s mark
EYESYNERGY are similar inasmuch as they both contain the more dominant term
“SYNERGY” used in connection with merely descriptive terms that are not likely to
distinguish the marks and identify them as coming from different sources.
Additionally, the services for which Applicant seeks to register its mark are related,
if not legally identical, to the services recited in the cited Registration, and the
channels of trade and classes of customers are likely to overlap. Therefore, use of
similar marks in connection with highly-related services creates a likelihood that
customers will be confused as to the source of the services.
Decision: The refusal to register Applicant’s mark WOUND SYNERGY in
Application Serial No. 87504866 under § 2(d) of the Trademark Act is affirmed.