Westmed Medical Group, P.C.

Trademark Trial and Appeal Board

Feb 20, 2013

No. 85192504 (T.T.A.B. Feb. 20, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
February 20, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Westmed Medical Group, P.C.
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Serial No. 85192504
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Howard N. Aronson of Lackenbach Siegel LLP for Westmed Medical Group, P.C.

Dezmona J. Mizelle-Howard, Trademark Examining Attorney, Law Office 110
(Chris A. F. Pedersen, Managing Attorney).
_____

Before Cataldo, Lykos, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Westmed Medical Group, P.C. filed an application to register on the Principal
Register the mark THE FUTURE OF HEALTHCARE TODAY, in standard
character form, for “Medical services; Physician services,” in International Class
44.1
The trademark examining attorney refused registration under § 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, as used in

1 Application Serial No. 85192504, filed under Trademark Act § 1(a), 15 U.S.C. § 1051(a), on
December 7, 2010, with a claim of first use and first use in commerce of September 22,
2009.
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connection with applicant’s services, so resembles the registered mark shown below,
as to be likely to cause confusion, or to cause mistake, or to deceive.

The cited mark is registered on the Principal Register for the following services in
International Class 35:
Managed care services, namely, electronic processing of
health care information; Promoting the goods of others,
namely, providing information regarding discounts,
coupons, rebates, vouchers and special offers for the goods
of others; Providing an internet-based database of patient
medical information designed to facilitate patient-
authorized, HIPAA-compliant sharing and maintenance
of patient medical information amongst a patient's doctors
such that this information can be directly inserted into
the doctor's medical reports as a means of increasing
medical record generation efficiency and accuracy.2
The cited registration includes a disclaimer of the exclusive right to use THE
SMART MED CARD apart from the mark as shown. The colors white, blue and
orange are claimed as features of the mark.
When the refusal was made final, applicant filed a request for
reconsideration, which was denied. This appeal ensued. Applicant and the
examining attorney have filed briefs and applicant has filed a reply brief.
As an initial matter, we note that the examining attorney has submitted
evidence with her appeal brief. Such evidence is untimely and we have not
considered it. “The record in the application should be complete prior to the filing of

2 Reg. No. 3774329, issued on April 13, 2010.
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an appeal. The Trademark Trial and Appeal Board will ordinarily not consider
additional evidence filed with the Board by the appellant or by the examiner after
the appeal is filed.” 37 C.F.R. § 2.142(d). See also TBMP § 1207.01 (3rd ed., June,
2012). We have considered all evidence that the examining attorney submitted up
to and including her Office action denying applicant’s request for reconsideration.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods and services at issue. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, the applicant and
the examining attorney have also submitted evidence and arguments regarding
classes of customers, trade channels, similar marks in use, the registrant’s normal
field of expansion, and absence of actual confusion.
We will first consider the similarity or dissimilarity of the marks at issue.
Applicant rightly points out that in our analysis under Section 2(d) we must
compare the marks at issue in their entireties. However, there is nothing improper
in stating that, for rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In any event, we agree with applicant
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that the wording THE SMART MED CARD is the dominant portion of the cited
registered mark. This wording, though disclaimed, nonetheless receives prominent
graphic emphasis in terms of size, position and stylization. It is also more likely to
be used by customers in calling for the services, rather than the lengthier slogan
that appears below it. We observe, in that regard, that the public viewing a mark is
unaware of what, if any, portions thereof may be disclaimed in a federal
registration. Id.
Nonetheless, it is highly significant that applicant’s mark is contained in its
entirety in the cited registered mark. The words THE FUTURE OF
HEALTHCARE TODAY, as they appear in the registered mark, are identical in
appearance, sound and meaning to applicant’s mark. The commercial impression
created by this slogan is not altered in any way by its combination with the other
elements of registrant’s mark. Where an applicant’s mark is included in its entirety
in a registered mark, confusing similarity has often been found. See, In re Mighty
Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (ML similar to ML
MARK LEES); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406,
407 (CCPA 1967) (THE LILLY similar to LILLI ANN); In re United States Shoe
Corp., 229 USPQ 707, 709 (TTAB 1985) (CAREER IMAGE similar to CREST
CAREER IMAGES). In the present case, a five-word phrase consisting of eight
syllables appears in each mark in identical order. This is a significant similarity
that would very likely be noted by customers who are exposed to both marks.
Prospective customers might well perceive applicant’s mark as a shortened form of
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the registered mark or as a free-standing use of the registrant’s tagline. United
States Shoe, 229 USPQ at 709.
Applicant contends that the registrant’s slogan is “barely visible in the Cited
Mark.”3 However, it is indeed clearly visible on the registration certificate, and it is
only reasonable to assume that in the marketplace registrant will display the mark
in a scale in which the slogan is legible. We also take into consideration all other
graphic elements of the registered design mark. However, we note that registrant’s
slogan is presented in a plain, relatively common typeface. There is nothing in the
record to indicate that applicant’s mark would be displayed in a typeface that is
noticeably distinct from that of registrant.
Applicant also argues, in essence, that the word HEALTHCARE in
registrant’s slogan is descriptive and the remainder of the slogan is highly
suggestive, thereby weakening the slogan’s importance as a source-indicating
component of the registered mark. “This is not a case where the common words are
coined or fanciful, and are thus inherently strong.”4 We disagree with this
assessment. Although the reference to HEALTHCARE is suggestive of the
applicant’s and registrant’s field of business, the suggested message that TODAY
and THE FUTURE have become one is imaginative and non-literal. Accordingly,
the slogan as a whole is distinctive. On the subject of the strength of the slogan,
applicant makes reference to “a third mark in the relevant field on the Trademark
Register having the words ‘THE FUTURE OF HEALTHCARE TODAY’,” to suggest

3 Applicant’s brief at 5, 7.
4 Applicant’s reply brief at 4.
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that “consumers can distinguish between marks that contain this phrase.”5
However, this registration has not been made of record and, in any event, it would
not be probative evidence that the third-party mark is actually in use or that the
public has become familiar with it. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476
F.2d 1004, 177 USPQ 462, 463 (CCPA 1973); Productos Lacteos Tocumbo S.A. de
C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011).
Accordingly, we see no reason to consider the slogan weak as a source-indicator.
Considering applicant’s mark and the cited registered mark in their
entireties, we find the marks to be similar, because applicant’s mark is identical in
sound, appearance, and meaning to a substantial distinctive portion of the
registered mark. Accordingly, this du Pont factor weighs in favor of a finding of
likelihood of confusion.
We turn next to the similarity or dissimilarity of the services at issue. For
purposes of demonstrating that the services of applicant and registrant are
commercially related, the examining attorney has submitted certain third-party
registrations purporting to show that services like those of applicant and registrant
may emanate from a single source. The proffered third-party registrations are not
of the type that might be considered probative under In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-1786 and In re Mucky Duck Mustard Co. Inc., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988), because (with only a single exception) the

5 Applicant’s brief at 6, and fn. 1. The footnote indicates that the phrase in the third-party
registration is actually THE FUTURE OF WOMEN’S HEALTHCARE… TODAY.
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services identified therein are different from those of applicant and registrant.
Accordingly, we have not considered them.
We will focus on the healthcare-oriented services of the registrant, as they
are the most closely related to applicant’s “Medical services; Physician services.”
Applicant emphasizes that the first clause of registrant’s recitation of services
should not be interpreted to cover all “managed care services.”6 The point is well
taken. A fair reading of this portion of the recitation is “electronic processing of
health care information” rendered in the context of “managed care services.”7 The
other healthcare-related services of registrant are (briefly) “Providing an internet-
based database of patient medical information designed to facilitate patient-
authorized… sharing and maintenance of patient medical information amongst a
patient's doctors….”
Applicant accurately points out that “Medical services; Physician services”
are not included within the scope of the registrant’s services; there is no direct

6 Applicant’s brief at 7-8.
7 “Managed care” is defined as “Any arrangement for health care in which an organization,
such as an HMO, another type of doctor-hospital network, or an insurance company, acts
an intermediate between the person seeking care and the physician” (The American
Heritage Dictionary of the English Language, retrieved on February 15, 2013 from
http://www.credoreference.com/entry/hmdictenglang/managed_care); and “a system of
health care (as by an HMO or PPO) that controls costs by placing limits on physicians' fees
and by restricting the patient's choice of physicians” (Merriam-Webster Online Dictionary
and Thesaurus, retrieved on February 15, 2013 from http://www.merriam-
webster.com/dictionary/managed%20care). The Board may take judicial notice of dictionary
definitions, 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), including online
dictionaries that exist in printed format or have regular fixed editions. In re Red Bull
GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).

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overlap. Applicant argues that its services “are related to the doctor-patient
relationship itself,” while registrant’s services are “very specific administrative
functions.”8 Applicant appears to suggest that while applicant’s services are
directed to patients, registrant’s services are directed to doctors and medical
administrators. A critical question is whether registrant’s services would be
marketed to patients, as well as to doctors and administrators. We must presume
that registrant’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 Paula
Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA
1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958);
In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). We find that electronic
processing of health care information, in the context of a managed care operation,
and the provision of a database that facilitates sharing of a patient’s medical
information among doctors, as authorized by the patient, are services that would be
of interest not only to doctors and administrators but to patients as well. A person
who has been treated in a medical facility expects that records of his treatment will
be maintained and that, upon his order, they may be transferred to a particular
doctor for purposes of further consultation. We note that patient authorization is
included as a significant element of registrant’s data maintenance and sharing
service, as identified in the registration. Accordingly, we find that patients are
among the classes of customers to whom registrant’s healthcare-oriented services

8 Applicant’s brief at 8, 9.
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may be marketed.9 We also find that applicant’s and registrant’s services may
travel through some of the same trade channels. The context of managed care
services is one trade channel through which medical and physician services are
provided. That is the same context in which registrant’s information processing
services are provided. Accordingly, we find that the du Pont factors relating to
classes of customers and likely channels of trade weigh in favor of a finding of
likelihood of confusion.
Applicant refers to the file history of the cited registration to argue that
registrant’s services are provided in connection with use of a “smart” medical card
that contains patient medical information.10 Applicant has not made the file history
of record, so it is not before us. However, the suggestion that registrant’s mark
might appear on a card that is carried by a patient would support a finding of
overlapping customer classes, rather than the opposite.
For the reasons stated above, we find that the services of applicant and
registrant are related, as they could be encountered by the same persons under
circumstances that could give rise to the mistaken belief that they originate from or
are in some way associated with the same provider, because of the similarity
between the marks used with them. Edwards Lifesciences Corp. v. VigiLanz Corp.,

9 Applicant argued during prosecution (but not in its brief) that customers for the services
of applicant and registrant are likely to select the services with care and not on impulse.
We are not persuaded that customers seeking medical and physician services exercise
particular care. The selection of medical care is often made under emergency
circumstances, and many patients lack the expertise to make a reasoned and careful choice
of medical and physician services. There being no evidence on this point in the record, we
treat this factor as neutral.
10 Applicant’s brief at 9.
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94 USPQ2d 1399. 1410 (TTAB 2010); Schering Corporation v. Alza Corporation, 207
USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corporation v. Anixter Bros. Inc.,
201 USPQ 851, 854 (TTAB 1978). Accordingly, this factor also favors a finding of
likelihood of confusion.
Finally, applicant contends that its mark and the registrant’s mark have
coexisted in the marketplace for two and one-half years with “no instances of
confusion… reported to Applicant.” Applicant bases this time period on the dates of
use stated in the cited registration.11 An uncorroborated statement of no known
instances of confusion is entitled to little weight, especially in an ex parte context in
which we have no input from registrant. See In re Majestic Distilling Co., Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003). There is no probative evidence
relating to the extent of actual use of applicant’s and registrant’s marks or showing
whether there have been meaningful opportunities for instances of actual confusion
to have occurred in the marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); and Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). The cited registration is not evidence
that registrant’s mark has been in use since the stated date of first use. Productos
Lacteos Tocumbo, 98 USPQ2d at 1934. Accordingly, the du Pont factor of the length
of time during and conditions under which there has been contemporaneous use
without evidence of actual confusion is considered neutral.

11 Applicant’s brief at 11.
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The examining attorney argues, with little elaboration, that applicant’s
services are within the natural zone of expansion of the registrant’s services. There
is no evidence of record to support this argument. Accordingly, we find this factor to
be neutral.
Having considered the evidence of record and all relevant du Pont factors,
including those not specifically discussed herein, we find that applicant’s mark, as
applied to applicant’s services, so closely resembles the cited registered mark as to
be likely to cause confusion, mistake or deception as to the source of applicant’s
services.
Decision: The refusal to register is affirmed.