Agdata, Inc.

Trademark Trial and Appeal Board

Dec 14, 2001

No. 75567010 (T.T.A.B. Dec. 14, 2001)

12/14/01 Paper No. 10

GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Agdata, Inc.
________

Serial No. 75/567,010
_______

Nancy Talavera Wood and Francis M. Pinckney of Kennedy Covington
Lobdell & Hickman for Agdata, Inc.

La Tonia M. Fisher, Trademark Examining Attorney, Law Office 113
(Meryl Hershkowitz, Managing Attorney).
_______

Before Cissel, Hohein and Chapman, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Agdata, Inc. has filed an application to register the
mark "MEDDATA" for "providing an on-line database in the field
of managed health care insurance coverage, namely, providing on-
line referrals and data management services for use by office
administrative staff for submitting referrals on-line to
specialists and insurance providers in compliance with the
referral and authorization rules and regulations of the
insurance companies' managed care plans" in International Class
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/567,010
2
35 and "providing an on-line database in the field of managed
health care insurance coverage, namely, providing insurance plan
information including on-line eligibility verification for
insurance plans, deriving historical reports, obtaining feedback
on patients' care, and Medicare and Medicaid referral tracking"
in International Class 36.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant's mark, when used in connection with its
services, so resembles the mark "MEDDATA," which is registered
for, inter alia, "providing personal and medical information to
medical professionals in emergency situations" in International
Class 42,2 as to be likely to cause confusion, mistake or
deception.3

1 Ser. No. 75/567,010, filed on October 7, 1998, which is based on an
allegation of a bona fide intention to use the mark in commerce.

2 Reg. No. 2,057,098, issued on April 29, 1997, which sets forth a date
of first use anywhere and first use in commerce of January 13, 1993.
Although such registration also covers "identification cards
containing microprocessed images with information pertaining to
personal and medical profiles, information essential for the care of
the individual, and information regarding notification of appropriate
persons in case of emergency" in International Class 9 and
"cooperative advertising and marketing" services in International
Class 35, the final refusal is considered to be limited to the
services in International Class 42, as set forth above, since neither
the final refusal nor the Examining Attorney's brief argues that there
is a likelihood of confusion as to any of the other goods and services
listed in the cited registration.

3 While, initially, registration was also refused under Section 2(d) on
the basis of two other registrations, owned by different registrants,
for the mark "MEDATA" for "medical cost control services--namely,
Ser. No. 75/567,010
3
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We reverse the refusal to
register.
The determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a
likelihood of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973). Here, inasmuch as
the respective marks are identical, the primary focus of our
inquiry is accordingly on the similarities and dissimilarities
in the respective services, although other factors, including
purchaser sophistication and the highly suggestive nature of the
marks also play a role in our determination of the issue of
likelihood of confusion.
The Examining Attorney, citing Amcor, Inc. v. Amcor
Industries, Inc., 210 USPQ 70 (TTAB 1981) as a "controlling
case," argues that "since applicant's and registrant's marks are

recording, assessing and evaluating billing information" (Reg. No.
1,287,180, issued on July 24, 1978 and setting forth a date of first
use anywhere of July 10, 1975 and a date of first use in commerce of
July 28, 1975; combined affidavit §§8 and 15) and the mark "MED-I-
DATA" for "computer programs for use in analyzing and storing data in
the health care field, including patient and employee records and
medical administrative information" (Reg. No. 1,723,312, issued
pursuant to ownership of a foreign registration on October 13, 1992
and later canceled for failure to file the required §8 affidavit),
such refusals, along with a refusal under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1), on the ground of mere
descriptiveness, were subsequently withdrawn in the final Office
Action.
Ser. No. 75/567,010
4
identical, the relationship between applicant's services ... and
the registrant's services ... need not be as close to support a
finding of likelihood of confusion ...." In this case, the
Examining Attorney contends that the respective services, rather
than being completely different as asserted by applicant in its
brief, are sufficiently "related in that they both concern
providing personal and medical information for the determination
of the proper healthcare services to be administered."4 The
Examining Attorney insists, in this regard, that the record
includes "numerous [use-based third-party] registrations
submitted by the prior examining attorney which clearly indicate
that the services at issue emanate from a single source" and
thus "[i]t is clear that the public has been exposed to the
notion that providing health and medical information and
providing a database containing medical histories for referral
purposes are marketed under the same name."
Specifically, the Examining Attorney maintains in
light of the record that:

4 Although the Examining Attorney, in her brief, goes so far as to
argue that, "[s]ince the identification of the registrant's ...
services is very broad, it is presumed that the registration
encompasses all ... services of the type described, including those in
the applicant's more specific identification," we fail to see how
registrant's services of "providing personal and medical information
to medical professionals in emergency situations" can reasonably be
said to encompass applicant's services of variously "providing an on-
line database in the field of managed health care insurance coverage
...."
Ser. No. 75/567,010
5
As evidenced, it is common that the
personal and medical information provided by
Registrant may include insurance plan
coverage and eligibility information,
patient referral information, and reasons
for doctor referral, all information needed
by medical personnel to perform transactions
concerning patients in emergency and non-
emergency situations. Furthermore,
eligibility for many insurance plans depends
on the health of the patient and personal
and medical information must be submitted to
insurance companies in order for insurance
companies to determine whether an individual
should be covered, or if eligible to be
covered, to whom the individual should be
allowed to seek medical services from. ....
As a result, potential purchasers would be
likely to assume, upon seeing applicant's
services sold under a mark identical to that
of the registrant, that they originated from
a common source. ....

In addition, the Examining Attorney maintains that confusion is
likely because:
The services at issue are within a
natural field of expansion of each other.
The numerous third-party registrations made
of record all clearly indicate that services
of providing health care provider referral
services and insurance plan information
services, as well as services of providing
personal and medical information to medical
professionals, are services that are within
a natural field of expansion of each other
and are services sold under the same mark by
one single source. This evidence also
clearly demonstrates that the services
identified in the registrations travel in
the same channels of trade to the same
consumers.

Given the identical nature of the marks
at issue, the demonstrated relationship
between the services is more than adequate
Ser. No. 75/567,010
6
to create likelihood of confusion in the
mind of the potential purchaser.

Applicant, on the other hand, contends that confusion
is not likely from contemporaneous use of the identical mark
"MEDDATA" because its services "are specifically different than
and noncompetitive with" the registrant's services, stressing
that the latter involve "providing personal and medical
information to medical professionals in emergency situations ...
(emphasis added)." While acknowledging that "both parties
provide services in the same broad health care field," applicant
maintains that its various services of "providing an on-line
database in the field of managed health care insurance coverage,
namely, providing on-line referrals and data management services
for use by office administrative staff for submitting referrals
on-line to specialists and insurance providers in compliance
with the referral and authorization rules and regulations of the
insurance companies' managed care plans" and "providing
insurance plan information including on-line eligibility
verification for insurance plans, deriving historical reports,
obtaining feedback on patients' care, and Medicare and Medicaid
referral tracking," are services which "are directed to office
administrative staff in non-emergency situations." In
consequence thereof, applicant insists that its services "are
provided through different channels of trade and have nothing in
Ser. No. 75/567,010
7
common with registrant's services." In essence, applicant
contends that its services simply "provide an on-line referral
management database which replaces the current manual process
for submitting referrals in compliance with the rules and
regulations of managed care insurance providers."
Applicant also emphasizes the fact that "the
sophistication of the class of prospective purchasers of the
subject services is a critical factor which weighs against a
likelihood of confusion," noting that because the typical
purchasers for its services "are office administrators for
primary care practices," such personnel "are trained and
sophisticated buyers who clearly understand the differences
between the [respective] services" and thus would not be likely
to confuse the source of registrant's services of providing
personal and medical information to medical professionals in
emergency situations with applicant's "on-line referral
management database [services] (emphasis added)" and vice versa.
Furthermore, while acknowledging that "past registrations do
not, in and of themselves, bind the Board to follow a similar
course of action," applicant argues that it is still the case
that "the large number of prior registrations including the term
'Med' for goods/services in the health care industry and the
existing registrations for [the marks] MEDATA, MED-I-DATA and
MEDDATA suggest that consumers are not likely to be confused."
Ser. No. 75/567,010
8
In particular, applicant reiterates that its services "are
completely different from the services provided under the
[cited] registrant's mark" and that the mark which applicant
seeks to register "is no more likely to be confused with [the
mark which is the subject of] any of the existing
registrations," including the cited registration, "than such
marks are likely to be confused with one another." Applicant
concludes, therefore, that there is no likelihood of confusion.5
Upon consideration of the arguments presented and a
review of the evidentiary record, we agree with applicant that a
likelihood of confusion has not been shown. It is well settled,
of course, that services or goods need not be identical or even
competitive in nature in order to support a finding of
likelihood of confusion. Instead, it is sufficient that the
services or goods are related in some manner and/or that the
circumstances surrounding their marketing are such that they
would be likely to be encountered by the same persons under
situations that would give rise, because of the marks employed
in connection therewith, to the mistaken belief that they

5 Although applicant also asserts that it "selected the mark [it seeks
to register] in good faith and with no intent to deceive registrant or
benefit from its reputation," there simply is no evidence in the
record, such as an affidavit or declaration from an officer of
applicant having first-hand knowledge of applicant's intent in
choosing its mark, to support applicant's assertions. Accordingly,
applicant's contention regarding its asserted good faith adoption of
its mark will not be given further consideration.

Ser. No. 75/567,010
9
originate from or are in some way associated with the same
entity or provider. See, e.g., Monsanto Co. v. Enviro-Chem
Corp., 199 USPQ 590, 595-96 (TTAB 1978) and In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). One
way, in particular, of demonstrating such a close relationship
is by making of record copies of use-based third-party
registrations of marks which, in each instance, are registered
for the respective services or goods at issue. While such
third-party registrations are admittedly not evidence that the
different marks shown therein are in use or that the public is
familiar with them, they nevertheless have some probative value
to the extent that they serve to suggest that the services or
goods listed therein are of the kinds which may emanate from a
single source. See, e.g., In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993) and In re Mucky Duck Mustard
Co. Inc., 6 USPQ2d 1467, 1470 (TTAB 1988) at n. 6.
Contrary to the Examining Attorney's position, we find
that the record in the present case does not contain "numerous"
use-based third-party registrations which "clearly indicate that
the services at issue emanate from a single source," such that
an inference could therefore reasonably be drawn that the
relevant public has been exposed to encountering, under the same
mark, services of the kinds which applicant intends to provide
and services of the type provided by the cited registrant. Of
Ser. No. 75/567,010
10
the many third-party registrations in the record, at best only
three of those which are based on use of the subject marks in
commerce even arguably cover both applicant's services and those
of the cited registrant.6 This meager evidence is simply
inadequate to establish that applicant's services of "providing
an on-line database in the field of managed health care
insurance coverage, namely, providing on-line referrals and data
management services for use by office administrative staff for
submitting referrals on-line to specialists and insurance
providers in compliance with the referral and authorization
rules and regulations of the insurance companies' managed care
plans" and "providing insurance plan information including on-
line eligibility verification for insurance plans, deriving
historical reports, obtaining feedback on patients' care, and
Medicare and Medicaid referral tracking" are sufficiently
related to the cited registrant's services of "providing

6 One registration sets forth, on the one hand, "on-line computer
services--namely, providing transaction services to consumers,
providers, administrators and other participants in the healthcare
industry via an on-line computer network, namely, insurance
eligibility and verification" and "on-line computer services--namely,
providing on-line medical information and on-line medical journals and
medical reference databases to consumers, providers, administrators
and other participants in the healthcare industry," on the other;
another registration specifies both "health insurance administration"
and "providing information regarding medical information, health care
information and health care insurance information via a computer
database," while a third registration rather ambiguously lists, in
addition to "providing access to various computer data bases for the
purpose of identifying insurance eligibility, insurance pre-
authorization and referrals," such "network activities" as "medical
Ser. No. 75/567,010
11
personal and medical information to medical professionals in
emergency situations" as to be likely, when rendered under the
identical mark "MEDDATA," to cause confusion, mistake or
deception.
Instead, the respective services are on their face
specifically different, with applicant's services essentially
constituting an on-line database directed to administrative
office staff of primary care practitioners for routine handling
of patient referrals and various insurance information in the
field of managed health care insurance coverage, while the cited
registrant's services are focused on providing personal and
medical information in emergency situations to medical
professionals, which typically would include doctors, nurses and
medical technicians rather than administrative office staffers.
Thus, it is clear that the respective services are provided to
different classes of users and there is nothing in the record
which supports the Examining Attorney's contention that such
services are within the natural zone of expansion of each other.
It is also plain that the respective services would be purchased
only after careful evaluation.
Moreover, while notably neither applicant nor the
Examining Attorney has even offered to speculate as to the

laboratory order entry and resulting, pharmacy data base queries and
other information medical information exchange."
Ser. No. 75/567,010
12
actual class or classes of potential purchasers for the cited
registrant's services, it is plain that if, in any event, such
customers were the same as the office administrators for primary
health care practitioners, which are the buyers of applicant's
services, they nonetheless constitute knowledgeable, well
trained and sophisticated consumers who would be well versed in
both health insurance requirements and personal medical
information systems and thus would be discriminating in their
selections of providers of the services at issue. Such
purchasers, given the obvious importance of health insurance
information to patient referral eligibility and the critical
nature of emergency patient medical care data, would necessarily
exercise a high degree of care and deliberation in their
selection of providers of the respective services.
Furthermore, even though applicant's and the cited
registrant's services are offered under the identical mark
"MEDDATA," it is manifest that such a mark is highly suggestive
of any kind of services involving the provision of medical
information and, thus, is a weak mark which is entitled to only
a narrow scope of protection. Evidence thereof is shown by the
fact that, at one time, the "MEDDATA" mark of the cited
registration registered over and coexisted on the register with
both a third-party registration for basically the same mark,
"MEDATA," for "medical cost control services--namely, recording,
Ser. No. 75/567,010
13
assessing and evaluating billing information" and a third-party
registration for the substantially similar mark "MED-I-DATA" for
"computer programs for use in analyzing and storing data in the
health care field, including patient and employee records and
medical administrative information." We consequently are
constrained to agree with applicant that, if such third-party
registrations could coexist with the cited registration, then
applicant's highly suggestive "MEDDATA" mark for its various on-
line database services in the field of managed health care
coverage should also be registered inasmuch as confusion with
the cited registrant's identical, and likewise weak, "MEDDATA"
mark, for its specifically different services of providing
personal and medical information to medical professions in
emergency situations, is not likely to occur.
Finally, while we acknowledge that, as argued by the
Examining Attorney, a patient's health care insurance
customarily plays a major role in the level of treatment,
including doctor referrals, available for elective or other non-
emergency medical situations, it is not so clear that such
insurance coverage likewise dictates, at least initially, the
degree of care in circumstances constituting medical
emergencies. Therefore, although there might be a possibility
of confusion from the contemporaneous use of the mark "MEDDATA"
in connection with both applicant's services and those of the
Ser. No. 75/567,010
14
cited registrant, in light of the specific differences in the
respective services, the sophistication of the purchasers and
users of such services, and the high degree of suggestiveness
inherent in the mark "MEDDTA," we conclude that confusion as to
source or sponsorship is not likely. As our principal reviewing
court has cautioned in this regard:
We are not concerned with mere theoretical
possibilities of confusion, deception, or
mistake or with de minimis situations but
with the practicalities of the commercial
world, with which the trademark laws deal.

Electronic Design & Sales, Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992),
quoting from Witco Chemical Co., Inc. v. Whitfield Chemical Co.,
Inc., 418 F.2d 1403, 164 USPQ 43, 44-45 (CCPA 1969).
Decision: The refusal under Section 2(d) is reversed.

Cissel, Administrative Trademark Judge, Dissenting:

I respectfully dissent. I would affirm the refusal to
register because the likelihood of confusion has been
Ser. No. 75/567,010
15
established by the Examining Attorney in this case. She has met
her burden of showing that the services set forth in the
application are commercially related to those specified in the
cited registration in such a way that the use of these identical
marks in connection with both services would be likely to lead
purchasers to conclude, mistakenly, that they are provided by a
single entity.
Contrary to the majority, I find several of the third-
party registrations made of record by the Examining Attorney to
be persuasive evidence in establishing that the services with
which applicant intends to use the mark it seeks to register
(including providing an on-line database in the field of health
care insurance coverage for use by administrative staff in
connection with submission of referrals to specialists and
insurance providers; providing insurance plan information
including eligibility verification for insurance plans; and
deriving historical reports) are related to the services set
forth in the cited registration (which include providing
personal and medical information to medical professionals in
emergency situations).
I agree with the majority that one way of
demonstrating that services are commercially related such that
the use of similar marks in connection with them is likely to
cause confusion is to make of record third-party registrations
Ser. No. 75/567,010
16
showing marks registered for both services at issue. Citing In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993), the majority noted that while not evidence that the marks
therein are in use or that the public is familiar with them,
such registrations do serve to suggest that the services
specified therein are of the kinds which may emanate from a
single source. Whereas the majority went on to characterize the
third-party registrations made of record by the Examining
Attorney in the case at hand as "meager" and "inadequate" to
establish that applicant’s services are sufficiently related to
the services in the cited registration, however, I find those
registrations to be persuasive evidence that these services are
related.
For example, the three registrations referred to in
footnote 6 of the majority opinion appear to be Registration No.
2,394,818, which lists, on the one hand, "on-line computer
services--namely, providing transaction services to ...
administrators and other participants in the healthcare industry
via on on-line computer network, namely, insurance eligibility
and verification," and on the other, "on-line computer services-
-namely, providing on-line medical information ...";
Registration No. 2,078,573, which lists both "health insurance
administration" and "providing information regarding medical
information ... health care insurance information via a computer
Ser. No. 75/567,010
17
database"; and Registration No. 2,182,660, listing both
"providing access to various computer databases for the purposes
of identifying insurance eligibility ... [and] referrals," as
well as "medical information exchange."
These registrations are a sufficient basis upon which
to reach the conclusion that if the identical trademark were
used in connection with providing medical information by means
of a computer database and providing insurance eligibility
information by means of a computer database, users of these
services would have reason to assume that a single entity is
responsible for both services. It is reasonable to assume that
a hospital or an emergency care facility, for example, would
need to access a computer database in order to verify that it
would be compensated for medical services that were about to be
rendered to a patient, as well as to find out the details of
such a patient’s medical history in order to treat properly the
emergency condition without running afoul of pre-existing
conditions that the patient’s medical history would reveal.
That the medical information might be accessed by a different
employee of the medical facility than the person who would
review the database to determine insurance eligibility is not
significant. Both such individuals would be working together
for the same business entity with the same objective, getting
the emergency patient authorized medical treatment, and their
Ser. No. 75/567,010
18
recommendations to purchase the access to the databases they
need are likely to be made to the same individual in the
organization who handles purchasing such products. The patient
would only be utilizing a single trade channel in obtaining
these kinds of services.
The majority makes the point that the services
involved herein would be bought only after careful consideration
by discriminating purchasers, and that the record shows that the
field is crowded with marks which are similarly suggestive of
these types of services. While acknowledging that this is so, I
am nonetheless constrained to point out that applicant intends
to use the very same mark that the owner of the cited
registration has already used and registered, and, as noted
above, the services with which applicant intends to use it are
commercially related to those specified in the cited
registration. Under these circumstances, confusion would
clearly be likely.
Accordingly, I would affirm the refusal to register
under Section 2(d) of the Act.