Walgreen Co.

Trademark Trial and Appeal Board

Jan 17, 2020

87626859 (T.T.A.B. Jan. 17, 2020)

This Opinion is not a
Precedent of the TTAB

Mailed: January 17, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Walgreen Co.
_____

Serial No. 87626859
_____

Tamara A. Miller of Leydig Voit & Mayer LTD
for Walgreen Co.
Young Wolfe, Trademark Examining Attorney, Law Office 122,
John Lincoski, Managing Attorney.
_____

Before Mermelstein, Heasley, and Lynch,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Walgreen Co. (“Applicant”) seeks registration on the Principal Register of the
mark ACCORA (in standard characters) for:
“Computer programs for use in building, maintaining and storing personal
health records, managing patient and prescription data, writing,
transmitting and filling prescriptions, performing drug-use evaluations,
checking pharmaceutical formulary compliance with federal regulations,
transmitting and viewing healthcare information in the nature of patient
medical data, patient medication data, and capturing billing charges, and
ordering lab and other medical services for use in the sale of
pharmaceuticals, medicines, and medical devices” in International Class 9;

and

Serial No. 87626859
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“Providing temporary use of non-downloadable computer programs for use
in building, maintaining and storing personal health records, managing
patient and prescription data, writing, transmitting and filling
prescriptions, performing drug-use evaluations, checking pharmaceutical
formulary compliance with federal regulations, transmitting and viewing
healthcare information in the nature of patient medical data, patient
medication data, and capturing billing charges, and ordering lab and other
medical services for use in the sale of pharmaceuticals, medicines, and
medical devices” in International Class 42.1

The Trademark Examining Attorney refused registration of Applicant’s proposed
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the registered mark ACORA (in standard characters) for,
in pertinent part:
“Design and development of computer hardware and software; computer
programming; consultancy and advisory services in the field of computer
software and consultancy and advisory services in the field of design and
development of computer hardware; rental of computer hardware and
software; but not including services in this class related to tailored parking
solutions and parking management” in International Class 42.2

When the refusal was made final, Applicant appealed. The original Examining
Attorney, Erica Jeung Dickey, was replaced by Examining Attorney Wolfe, who
requested that the appeal be suspended and the application returned to her so that
she could supplement the evidence of record.3 Trademark Rule 2.142(d), 37 C.F.R.
§ 2.142(d). After the Board granted this request, the Examining Attorney

1 Application Serial No. 87626859 was filed on Sept. 28, 2017, based on Applicant’s allegation
of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark
Act. 15 U.S.C. § 1051(b).
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.
2 Registration No. 4416717 issued on the Principal Register on Oct. 15, 2013. Combined
declaration of use and incontestability accepted and acknowledged, Dec. 17, 2019.
3 6-12 TTABVUE.
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supplemented the evidentiary record, and the appeal resumed.4 We affirm the refusal
to register.
I. Likelihood of Confusion
We base our determination of likelihood of confusion under Section 2(d) on an
analysis of all of the probative facts in evidence that are relevant to the factors
enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973) (“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575
U.S. 138, 113 USPQ2d 2045, 2049 (2015); see also In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1161-62 (Fed. Cir. 2019).
We have considered each DuPont factor that is relevant, and have treated any
other factors as neutral. See Zheng 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) (“Not all of the DuPont factors are relevant
to every case, and only factors of significance to the particular mark need be
considered.”)); 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.”). Varying weights may be
assigned to each DuPont factor depending on the evidence presented. See Citigroup
Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir.
2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“the
various evidentiary factors may play more or less weighty roles in any particular

4 13-15 TTABVUE.
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determination”). Two key considerations are the similarities between the marks and
the similarities between the goods and 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 (Fed. Cir. 2002) (“The likelihood
of confusion analysis considers all DuPont factors for which there is record evidence
but ‘may focus … on dispositive factors, such as similarity of the marks and
relatedness of the goods.’”)); 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 Marks

Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s and Registrant’s marks in their entireties, taking into account their
appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at
567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). “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).
In this case, the marks are similar in all respects. As the Examining Attorney
points out, ACCORA and ACORA differ only by the repeated letter “C”, which makes
little difference in their appearance and no difference at all in their sound.5 Since

5 Examining Attorney’s brief, 17 TTABVUE 3.
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neither word mark has a defined dictionary meaning,6 both are fanciful, conveying
the same or similar connotation and commercial impression. In short, the marks are
highly similar. Applicant does not dispute this.
The first DuPont factor weighs in favor of finding a likelihood of confusion.
B. Relatedness of the Goods and Services

Even though Applicant does not dispute the similarity of the marks, it argues that
the “nature of the goods or services” are sufficiently dissimilar under the second
DuPont factor to avoid likely confusion. DuPont, 177 USPQ at 567. Applicant argues
that the cited Registration generally describes the design, development, and rental of
computer hardware and software—i.e., traditional information technology services
that are not specific to any industry.7 The Application, on the other hand, identifies
a narrower range of goods and services: computer programs specifically related to the
sale of pharmaceuticals, medicines and medical devices, and the temporary use of
non-downloadable computer programs performing the same specific healthcare-
related functions.
Applicant argues that the Registration should not be read so broadly that it
encompasses the Application’s specified healthcare-related functions:
Just as “computer software” and “computer programs” are no longer
acceptable descriptions in an application, services such as “design and
development of computer software” and “rental of computer software”
should be recognized as limited services that do not encompass all
software. The Examiner’s logic would mean that any registration covering
software design services should block any application covering any type of
software at all, ranging from software to control airplanes, to software to
manage inventory at a pet store, to software to create animation for

6 Merriam-Webster.com 5/16/2018, June 1, 2018 Office Action at 13-14.
7 Applicant’s brief, 4 TTABVUE 10.
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movies.8

In support of this position, Applicant quotes Electronic Data Systems Corp. v.
EDSA Micro Corp., 23 USPQ2d 1460, 1463 (TTAB 1992), for the proposition that
“[g]iven the ubiquitous use of computers in all aspects of business in the United States
today, this Board and its reviewing Court have rejected the view that a relationship
exists between goods and services simply because each involves the use of
computers.”9 Applicant also relies on several nonprecedential Board decisions for the
proposition that a registration’s broadly described software design services do not
encompass all software programs bearing the same or highly similar mark.10

8 Applicant’s brief, 4 TTABVUE 11.
9 Applicant’s brief, 4 TTABVUE 9 (also citing M2 Software, Inc. v. M2 Commc’ns., Inc., 450
F.3d 1378, 78 USPQ2d 1944, 1948 (Fed. Cir. 2006) (recognizing the “pervasiveness” of
software and software-related goods in society).
10 In re STMicroelectronics NV, 2010 WL 985344, *2 (TTAB 2010) (nonprecedential decision
finding applicant’s FLEXILOGICi for “computer hardware and software for noise reduction,
spatial and strength processing, temporal tracking and gesture recognition of touch input
devices” not likely to be confused with registrant’s FLEXILOGIC for “computer software
design for others”; “Notwithstanding registrant’s broad recitation of software services,
without some evidence demonstrating a commercial relationship, we cannot presume that all
software design services are related to any and all computer software and hardware in
International Class 9, irrespective of the wording of the latter identification of goods.”) quoted
in In re Telco Sols., Inc., 2013 WL 4635989, *5 (TTAB 2013) (nonprecedential decision finding
applicant’s SAGE for specialized software and software as a service for generating and
managing subpoenas, service or warrants, and service of court orders, all for law enforcement
purposes, not confusingly similar to registrant’s SAGE for inter alia customized software
development and programming; “We have no reason to believe there will be a commonality
in the channels of trade or classes of purchase[r]s. We are not willing to presume that
Applicant’s Software, which is highly specialized and restricted to a specific industry,
narrowly defined as law enforcement, are in any way related to registrant’s broad recitation
of customized software development and programming.”); see also In re Docusys, Inc., 2004
WL 1427391, * 6 (TTAB 2004) (nonprecedential decision finding applicant’s DOCUVIEW for
medical system software for real time imaging and tracking patients and patient information,
drug administration information, surgical procedure status information and other medical
information not confusingly similar to registrant’s identical mark, DOCUVIEW, for
“computer programs for document management and production”; “Applicant’s software, as
identified in the application, does not involve the management and production of ‘documents’
as that term is used and understood in the context of ‘document management’ software.”).
Serial No. 87626859
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As in those cases, Applicant contends, the Examining Attorney’s refusal to register
the applied-for ACCORA mark is predicated on an overbroad reading of Registrant’s
services that would impermissibly encompass anything computer-related.11
According to Applicant, “when the Examiner construed the services in the cited
registration so broadly, she did not take into account the marketplace realities that
will serve to prevent confusion between the marks.” Registrant’s services are
traditional information technology (“IT”) services, not specific to any industry,
Applicant maintains.12 Indeed, Registrant’s website describes Registrant as an
“[a]ward winning IT managed services and business software partner, which helps
businesses implement MICROSOFT software.”13 Services of this sort are typically
directed to IT professionals, Applicant states, not to the pharmacy or other healthcare
professionals who would use Applicant’s programs.14 Applicant concludes that it
offers goods and services that are dissimilar to Registrant’s.
We disagree. The issue is not whether purchasers would confuse the Applicant’s
and Registrant’s goods and services, but rather “whether ‘the consuming public may
perceive [the respective goods or services] as related enough to cause confusion about
the source or origin of the goods and services.’” In re St. Helena Hosp., 774 F.3d 747,
113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002)). “[L]ikelihood of

11 Applicant’s brief, 4 TTABVUE 13.
12 Applicant’s brief, 4 TTABVUE 10, 22.
13 Applicant’s brief, 4 TTABVUE 10, citing May 7, 2018 Response to Office Action, TSDR at
10-11.
14 Applicant’s brief, 4 TTABVUE 22.
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confusion can be found ‘if the respective [goods and services] are related in some
manner and/or if the circumstances surrounding their marketing are such that they
could give rise to the mistaken belief that they emanate from the same source.’” Coach
Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed.
Cir. 2012).
While there is no rule that all computer goods and services are per se related,15
we nonetheless find that Applicant’s goods and services are related to Registrant’s
services in significant ways that would contribute to a likelihood of confusion among
potential purchasers. The comparison is based on the identifications in the
Application and Registration. See Stone Lion Capital Partners, LP v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v.
Houston Comp. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
First, we compare Registrant’s and Applicant’s Class 42 services. Registrant’s
pertinent services are the “design and development of computer hardware and
software” and “rental of computer hardware and software.” Applicant’s identified
services are “providing temporary use of non-downloadable computer programs”
related to healthcare records and the sale of pharmaceuticals, medicines and medical
devices. We find that Registrant’s service of renting computer software is legally
identical to Applicant’s narrower recited service that involves providing temporary
use of non-downloadable computer programs in the healthcare field. “Computer
programs” and “software” are synonymous. “‘Software’ is defined as ‘the programs

15 Info. Res. Inc. v. X*Press Info. Servs., 6 USPQ2d 1034, 1038 (TTAB 1988); see also
Trademark Manual of Examining Procedure (TMEP) § 1207.01(a)(iv) (Oct. 2018).
Serial No. 87626859
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used to direct the operation of a computer….’” Mass. Inst. of Tech. v. Abacus Software,
462 F.3d 1344, 80 USPQ2d 1225, 1233 n.7 (Fed. Cir. 2006) (quoting the RANDOM
HOUSE WEBSTER’S UNABRIDGED DICTIONARY). The Trademark Manual of Examining
Procedure uses the two terms interchangeably. See TMEP § 1402.03(d) (Oct. 2018).
To “rent” is “to grant temporary occupancy or use of (one’s property or service) in
return for regular payments,”16 as in “We rented our friends’ cottage for the month of
August.”17 Providing temporary use of non-downloadable software, known as
Software as a Service (SaaS), “describes when users rent or borrow online software
instead of actually purchasing and installing it on their computers.”18 The respective
services are thus functionally identical: renting and providing temporary use of
computer software programs that are installed on the user’s computer or accessed
remotely.
Registrant’s identification of “rental of computer hardware and software” services
expressly excludes “services in this class related to tailored parking solutions and
parking management,” but contains no other restriction or limitation. Therefore we
must presume that Registrant’s services encompass all other computer programs,
“including those which may be intended for the medical field.” In re N.A.D., Inc., 57

16 AHDictionary.com 1/7/2020. “The Board may take judicial notice of dictionary definitions,
including online dictionaries that exist in printed form or regular fixed editions. Univ. of
Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Red Bull GmbH, 78 USPQ2d 1375, 1377
(TTAB 2006).” M/S R.M. Dhariwal (HUF) 100% EOU v. Zarda King Ltd. & Global Tech. &
Trade Marks Ltd., 2019 USPQ2d 149090, *1 n.2 (TTAB 2019).
17 Merriam-Webster.com 1/7/2020.
18 Lifewire.com 1/22/2019, 14 TTABVUE 4, 56-57. See generally TMEP § 1402.11(a)(xii) (non-
downloadable computer software).
Serial No. 87626859
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USPQ2d 1872, 1874 (TTAB 2000). This is consistent with the principle that when a
registration describes services broadly, and contains no limitation as to their nature
or type, it is presumed that the registration encompasses all services of the type
described. In re Country Oven, Inc., 2019 USPQ2d 443903, *4 (TTAB 2019); In re
Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992) (registrant’s broadly identified
computer programs encompass all computer programs including the more specific
computer programs of applicant). Linkvest is still good law, notwithstanding the
Office’s more stringent current requirements for identifying computer programs.
TMEP § 1402.03(d). As Applicant admits, “the Trademark Office’s practice is to
require no level of specificity whatsoever for software-related services such as
‘software design and development,’ ‘computer programming,’ and ‘rental of
software.”19 If Applicant believes that Registrant’s scope of protection is overbroad, it
is not without remedies. As the Board stated in N.A.D.:
Applicant may, of course, seek a consent from the owner of the cited
registrations, or applicant may seek a restriction under Section 18 of the
Trademark Act, 15 USC § 1068. This remedy is available for those who
believe that a restriction in the cited registration(s) may serve to avoid a
likelihood of confusion.

In re N.A.D., 57 USPQ2d at 1874 (citing Eurostar Inc. v. “Euro-Star” Reitmoden
GmbH & Co. KG, 34 USPQ2d 1266 (TTAB 1994)). See also In re Solid State Design
Inc., 125 USPQ2d 1409, 1410 (TTAB 2018).
We cannot read limitations into the identification. In re i.am.symbolic, 123
USPQ2d at 1748. And we cannot restrict an identification based on extrinsic
evidence. “In innumerable cases, the Board hears arguments about how the parties’

19 Applicant’s reply brief, 18 TTABVUE 4-5.
Serial No. 87626859
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actual goods, services, customers, trade channels, and conditions of sale are narrower
or different from the goods and services identified in the applications and
registrations. But as stated in equally innumerable decisions of our primary
reviewing court, we may consider any such restrictions only if they are included in
the identification of goods or services.” In re FCA US LLC, 126 USPQ2d 1214, 1217
n.18 (TTAB 2018), aff’d, 778 Fed. Appx. 962 (Fed. Cir. 2019).20 Nor can we grant relief
under Section 18 sua sponte. In re Cook Med. Techs., 105 USPQ2d 1377, 1384 n.6
(TTAB 2012). Yet Applicant would have us effectively grant that relief, essentially
excluding from Registrant’s recitation software services in the field of healthcare,
pharmaceuticals, medicines, and medical devices.
For these reasons, we find that Registrant’s and Applicant’s services are
overlapping and legally identical. For much the same reasons, we find that
Applicant’s Class 9 goods are related to Registrant’s Class 42 services. Applicant’s
Class 9 goods are the same healthcare-related computer programs it would provide
in temporary non-downloadable format in its Class 42 services. Potential purchasers
would be presented with three options: renting computer software that is

20 Applicant relies on In re Trackmobile, Inc., 15 USPQ2d 1152, 1153 (TTAB 1990) as a basis
for considering evidence of Registrant’s market practices. Reply brief, 18 TTABVUE 5. But
that reliance is misplaced, as the identification of services in the cited Registration is not so
unclear or technical as to warrant reliance on extrinsic evidence. See In re Iolo Techs., LLC,
95 USPQ2d 1498, 1500 n.3 (TTAB 2010) (“Nor do we find the recitation of services in the
cited registration to be so vague as to require clarification.”). In any event, Trackmobile
looked to extrinsic evidence to determine the meaning of the identified goods in the relevant
trade, not to limit the goods of the applicant or the registrant to those it actually sold.
Trackmobile, 15 USPQ2d at 1153 (“The real dispute in this case concerns the relationship
between applicant’s goods as described in its application (mobile railcar movers) and
registrant’s goods as described in the registration (light railway motor tractors).”). Thus
Trackmobile did not limit the goods described in the application or the registration; it merely
gave industry-relevant meaning to that description. In this case, while the Registrant’s
services are broad, there is no genuine dispute as to their meaning.
Serial No. 87626859
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downloadable (Registrant’s Class 42 services), temporarily using computer software
that is non-downloadable (Applicant’s Class 42 services, encompassed by Registrant’s
Class 42 rental of software, which could be either downloadable or non-
downloadable), or purchasing the computer software (Applicant’s Class 9 goods).
These three options are simply different conduits offering the same type of
technology. Cf. In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1093 (TTAB 2016) (quoting
In re St. Helena Hospital, 113 USPQ2d at 1087: hard copies and streaming over the
Internet are simply different conduits for the same content, “generally recognized as
having a common source of origin”). Given the virtually identical marks, ACCORA
and ACORA, purchasers are likely to believe that the options are simply different
lines emanating from the same source, or from affiliated sources. See In re Hitachi
High-Technologies Corp., 109 USPQ2d 1769, 1774 (TTAB 2014) (“[C]areful
purchasers who do notice the difference in the marks will not necessarily conclude
that there are different sources for the goods, but will see the marks as variations of
each other, pointing to a single source.”). As the Board has stated, “It may be
appropriate at this point to note, as has been observed by one commentator, that the
statutory concept of ‘likelihood of confusion’ denotes any type of confusion, including
not only source confusion but also ‘confusion of affiliation; confusion of connection; or
confusion of sponsorship.’” In re Nat’l Novice Hockey League, Inc., 222 USPQ 638, 641
n.7 (TTAB 1984) (quoting J.T. McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION § 24.3.B).
Beyond comparing the identifications in the Application and Registration, the
Examining Attorneys adduced third party evidence to show the relatedness of the
Serial No. 87626859
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respective goods and services. The December 21, 2017 and June 1, 2018 Office Actions
contain 16 use-based third party Principal Register registrations identifying the
design or rental of computer software in Class 42 and software goods in Class 9 under
single marks.21 Third-party registrations of this sort have probative value to the
extent that they serve to suggest that the listed goods and services are of a type that
may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6
(TTAB 1988), aff’d per curiam, 864 F.2d 149 (Fed. Cir. 1988). These Office Actions
also contained Internet evidence of six companies—Microsoft, Adobe, Autodesk,
Kanda Software, T/DG, and Amazon—offering both software goods and also software
design, development, or rental services under their respective marks.22 See Hewlett-
Packard v. Packard Press, 62 USPQ2d at 1004 (evidence that “a single company sells
the goods and services of both parties, if presented, is relevant to the relatedness
analysis”).
Applicant argues that:
Third party registrations can have some limited probative value as to the
relatedness of goods/services, to the extent they may show that certain goods
and services can emanate from the same source. However, the third party
registrations must include both the goods/services in the application at issue
and the goods/services in the cited registration. See In re The W.W. Henry Co.,

21 E.g., Reg. No. 5206983 for WIZY; No. 4939401 for ENTRATA; No. 5348490 for HEWLETT
PACKARD ENTERPRISE; Dec. 21, 2017 Office Action at 13-51. E.g., Reg. No. 4662968 for
CLOUDMONKEY; No. 5238140 for SNOW CLOUD; No. 5269280 for PIPKINS; June 1, 2018
Office Action at 50-77.
22 Microsoft.com 12/21/2017, NYTimes.com 12/21/2017, Autodesk.com 12/21/2017, Dec. 21,
2017 Office Action at 52-72. KandaSoft.com 5/17/2018, TheDigitalGroup.com 5/17/2018,
Amazon.com 5/17/2018, June 1, 2018 Office Action at 15-38.
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L.P., 82 U.S.P.Q.2d 1213, 1215 (TTAB 2007)….23
In this case, however, Applicant argues that, apart from two registrations, “none
of the other third party registrations relied on by the Examiner cover computer
programs that are related to healthcare or the sale of pharmaceuticals, medicines, or
medical devices.”24 To illustrate:

25

23 Applicant’s brief, 4 TTABVUE 15.
24 Id.
25 Applicant’s brief, 4 TTABVUE 16. (The second registration in the table is No. 4939401.)
Serial No. 87626859
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Although two of the third-party registrations identified software for use in the
medical field, Applicant suggests that neither one should be afforded any probative
value. Concerning the first registration, No. 5404618, Applicant argues:
While this third party registration covers software having similar
functions as [Applicant’s] Programs, it does not cover the general software-
related services in the cited registration. Instead, the only software
development services listed in this third party registration are specifically
limited to the healthcare field, as follows: “software development in the
fields of healthcare, therapeutics, pharmaceuticals, and nutritional
supplements.” Therefore, this third party registration is distinguishable
from the cited registration. It does not cover both software of the type
covered by the Application and the broad software services in the cited
registration, as required to be deemed probative evidence.26

As for the second registration, No. 5182384, Applicant urges that

the specific medical software covered by this third party registration is for
managing transplantation proceedings with respect to biological material.
Such software is quite different in nature and purpose from Walgreens’
Programs and it would be directed to different purchasers in the medical
field. Therefore, this second registration should not be afforded any
probative value, either.27

Similarly, Applicant contends, the third party websites on which the Examining
Attorney relies do not show that companies offering software design and rental
services of the sort covered by the Registration also offer goods or services related to
Applicant’s programs—or even related to healthcare, for that matter—as illustrated
by this table:

26 Applicant’s brief, 4 TTABVUE 20.
27 Applicant’s brief, 4 TTABVUE 20-21.
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28
The Examining Attorney sought and obtained a suspension of the appeal and a
remand of the application so that she could supplement the record with more third
party evidence, such as eight third party marks registered for use in connection with
pharmaceutical or health records software and software design and rental services.
For example:
Registration No. Pertinent Goods and Services
4370762 Cl. 9 Computer software for processing and tracking
pharmaceutical prescription orders, … storing clinical data
that features patient medical and dental histories, patient
medications, lab results;
Cl. 42 Consulting services in the field of design, selection,
implementation and use of computer hardware and software
systems for others; computer programming and software

28 Applicant’s brief, 4 TTABVUE 19.
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design; providing an interactive website featuring non-
downloadable software for processing and tracking
pharmaceutical prescription orders, laboratory requests;
4764953 Cl. 9 Computer software for monitoring, collecting and
transmitting patient data;
Cl. 42 Providing a cloud computing network featuring
software for use in monitoring, collecting and transmitting
patient data;
4757400 Cl. 9 Computer software for data collection, management,
publishing and exchange in the fields of healthcare, … skilled
nursing, quality assurance…pharmacies and enterprise
platforms;
Cl. 42 Software and computer system design; providing a
website featuring on-line non-downloadable software tools for
data collection, management, publishing and exchange in the
fields of healthcare, … skilled nursing, quality assurance …,
pharmacies and enterprise platforms;
5266951 Cl. 9 Downloadable software and mobile applications for
accessing data from an internet website portal featuring
laboratory blood test results analyzing individual patient
biomarkers; Downloadable software and mobile applications
managing individual patient data, patient information,
health claims data and patient profiles…;
Cl. 42 Application service provider (ASP) featuring software
for use in the field of managing individual patient data,
patient information, health claims data and patient profiles,
for analyzing individual health data, health information and
health claims data…; Mobile and web app design and
development;
5588678 Cl. 9 Medical and healthcare related software, namely,
electronic medical records software…;
Cl. 42 Software IT services and support for medical and
healthcare related software, namely, software development,…
software implementation;
29
The Examining Attorney also introduced Internet evidence showing five entities
that produce pharmaceutical or health records software and offer software design

29 14 TTABVUE 66-88.
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services—e.g., Bahria Enterprise Systems & Technologies Limited, Dromos, and
McKesson—30 and showing that Software as a System (SaaS) may be offered via
rental.31
Applicant, in its reply brief, does not respond specifically to this supplemental
third party evidence, but maintains its position that the Registration should not be
afforded such broad, far-reaching scope, and should be limited based on Applicant’s
extrinsic evidence of Registrant’s current practices in the marketplace.32 “Until the
Trademark Office begins requiring that software-related services be further specified,
it is equitable and justifiable for the Board to consider the probative evidence of the
type submitted by [Applicant] in this case,” it concludes.33
Even though there is no rule that all computer goods and services are per se
related, we find that the respective goods and services identified in this case, unlike
the nonprecedential cases on which Applicant relies, are overlapping, legally
identical, and otherwise related in ways that would contribute to purchaser confusion
as to source, affiliation, or sponsorship, given the similarity of the marks. We decline
to limit Registrant’s identification of services sua sponte based on extrinsic evidence
in this ex parte proceeding. Although this conclusion is supported by the respective
identifications of goods and services standing alone, it is corroborated by the third
party evidence, which shows how Applicant’s service of providing temporary use of

30 Best-bf.com 1/22/2019, MeetDromosPTM.com, 1/22/2019, McKesson.com 1/22/2019, 14
TTABVUE 7-36.
31 Lifewire.com 1/22/2019, 14 TTABVUE 4, 56-57.
32 Applicant’s reply brief, 18 TTABVUE 4-7.
33 Applicant’s reply brief, 18 TTABVUE 5.
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non-downloadable computer programs can be and is commonly provided via rental,
and how Applicant’s sort of computer goods can be and are commonly provided by
entities that design computer software.
In sum, the second DuPont factor weighs in favor of a likelihood of confusion.
C. Similarity of Channels of Trade and Classes of Purchasers
The third DuPont factor concerns the similarity or dissimilarity of established,
likely-to-continue trade channels and classes of purchasers. DuPont, 177 USPQ at
567. Although the application is based on intent to use, Applicant argues that the
respective goods and services will be directed to different purchasers through distinct
channels of trade.
“[Applicant’s] Programs will be directed to professionals in the pharmacy and/or
healthcare fields who are responsible for the tasks the programs offer, such as
maintaining medical records, managing prescription data, providing pharmacy
services, ensuring pharmaceutical compliance, evaluating drug use, and the like,”
Applicant contends. “In contrast, the Registrant’s generalized software-related
services are likely directed to employees at businesses working in the area of IT.”34
“[M]ost purchasers of computer programs will never purchase software design
services, just as most bicycle purchasers will never purchase bicycle design services,”
Applicant states.35 “Even if both companies offered their respective goods/services to
the healthcare industry,” Applicant concludes, “they would market and sell their
respective goods/services in different ways, for different purposes, under different

34 Applicant’s brief, 4 TTABVUE 22.
35 Applicant’s brief, 4 TTABVUE 14.
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conditions, to different sets of purchasers, thereby avoiding any likelihood of
confusion.”36
But as we have found, Applicant’s services of providing temporary use of non-
downloadable computer programs are legally identical to Registrant’s rental of
computer software, so these respective Class 42 services are “presumed to travel in
the same channels of trade to the same class of purchasers.” See In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard v.
Packard Press, 62 USPQ2d at 1005); see also In re N.A.D., 57 USPQ2d at 1874. And
Applicant’s Class 9 goods are the same healthcare-related computer programs it
would provide in temporary non-downloadable format, so these programs would tend
to travel in the same channels of trade as well, and be offered as an optional format
to the same class of potential purchasers. Furthermore, as the third party evidence
indicates, the same entities commonly offer medical and pharmaceutical software as
well as software design and development services via the same channels of trade to
some of the same prospective purchasers. These prospective purchasers—hospitals,
pharmacies, and other healthcare entities—are, by their very nature, institutional,
not individual, so Applicant’s analogy to individual bicycle purchasers is not well
taken. As Applicant states, its computer programs and Registrant’s services will be
directed to professional buyers.37 Moreover, if, as Applicant posits, both Applicant
and Registrant offered their respective goods and services to these healthcare
institutions, the professional buyers evaluating the goods and services would no

36 Applicant’s brief, 4 TTABVUE 22.
37 Applicant’s brief, 4 TTABVUE 23.
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doubt include physicians, pharmacists, and information technology specialists, as
well as purchasing agents. See In re Cook Med. Techs., 105 USPQ2d at 1381 (“Because
the goods are medical devices, the goods are presumed to be sold through medical
supply distributors, and the purchasers for such goods would include physicians and
purchasing agents for medical facilities such as hospitals and clinics.”).
The similarities in trade channels and classes of purchasers weigh in favor of a
finding of likelihood of confusion.
D. Care and Sophistication of Purchasers

Under the fourth DuPont factor, we consider “[t]he conditions under which and
buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.”
DuPont, 177 USPQ at 567.
As noted above, Applicant contends that its computer programs and Registrant’s
services will be directed to professional buyers:38
It cannot be disputed that [Applicant’s] highly specialized medical software
will be directed to sophisticated, knowledgeable professionals in healthcare
or pharmacy settings. As discussed above, purchasers in the medical field
and purchasers of software and software services typically exercise a great
deal of care in selecting goods and services. Therefore, the similarity
between the applied-for mark and the registered mark is not as significant
as it would be if the marks were used for inexpensive, over-the-counter
items likely to be verbally requested in retail stores.39

Given the nature of the respective goods and services, we acknowledge that many
prospective purchasers are likely to be sophisticated, knowledgeable professionals
who will exercise due care and deliberation in making their purchases. See generally

38 Applicant’s brief, 4 TTABVUE 23.
39 Applicant’s reply brief, 18 TTABVUE 4.
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Elec. Design & Sales, Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388,
1392 (Fed. Cir. 1992) (“Just from the record description of goods and services here
one would expect that nearly all of opposer’s and applicant’s purchasers would be
highly sophisticated.”); Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d
1399, 1413 (TTAB 2010) (“opposer’s heart monitors and applicant’s computer system
[monitoring for adverse drug effects] are purchased and licensed only after careful
consideration by persons who are highly knowledgeable about the products.”).
Although the purchase of Applicant’s and Registrant’s goods may involve
thoughtful decision-making, “[i]t is settled, however, that even sophisticated
purchasers are not immune from source confusion, especially in cases such as the
instant one involving similar marks and closely related goods [and services].” In re
Cook Med. Techs., 105 USPQ2d at 1383; see also In re Linkvest S.A., 24 USPQ2d at
1716 (agreeing that “[e]xpertise in a particular field does not necessarily endow one
with expertise in connection with the use of a trademark....”). Moreover, “[t]hat 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.
‘Human memories even of discriminating purchasers ... are not infallible.’” In re
Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (quoting
Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ
110, 112 (CCPA 1970)).
Here, even if prospective purchasers are sophisticated, they could still encounter
the ACCORA and ACORA marks at different times, in different settings; and the
respective goods and services offered under those marks would be legally identical in
Serial No. 87626859
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part and otherwise related, leading them to mistakenly infer that they emanate from
the same source, or from affiliated sources. See In re N.A.D., 57 USPQ2d at 1874
(“Purchasers, even sophisticated purchasers, aware of registrant’s SATURN software
(presumed to be in the same field), who then encounter applicant's SATURN
INFORMATION SYSTEM software are likely to believe that these goods come from
the same source.”). So while the sophistication and care of prospective purchasers
may weigh slightly against confusion, that is insufficient to overcome the likely
confusion resulting from the strong similarity of the marks and relatedness of the
goods and services. See In re Integrated Embedded, 120 USPQ2d 1504, 1516 (TTAB
2016) (“In this case, the legal identity or similarity of the services and similarity of
the marks outweigh any sophisticated purchasing decision.”).
The fourth DuPont factor thus weighs slightly against the likelihood of confusion.

II. Conclusion

Based on the similarity of the marks, as well as the relatedness of the goods and
services, and the overlapping trade channels and classes of purchasers, we find
confusion likely under Section 2(d). Even if purchaser sophistication and care weighs
slightly against confusion, balancing the relevant factors overall, this is insufficient
to overcome the likelihood of confusion.
Decision: The refusal to register Applicant’s proposed mark is affirmed as to both
International Classes.