AmeriCares Foundation, Inc.v.AmeriCare MedServices Inc. dba AmeriCare Ambulance

Trademark Trial and Appeal Board

Apr 12, 2012

No. 91187537 (T.T.A.B. Apr. 12, 2012)

Mailed:
April 12, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

AmeriCares Foundation, Inc.
v.
AmeriCare MedServices Inc. dba AmeriCare Ambulance
_____

Opposition No. 91187537
to application Serial No. 78181183
filed on Nov. 3, 2002
_____

Nathaniel D. Kramer of Kirschstein, Israel, Schiffmiller &
Pieroni, P.C. for AmeriCares Foundation, Inc.

Elise Tenen-Aoki and Ehab M. Samuel of Greenberg Traurig,
LLP for AmeriCare MedServices Inc. dba AmeriCare Ambulance.
______

Before Grendel, Kuhlke and Lykos, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

INTRODUCTION.
AmeriCare MedServices Inc. dba AmeriCare Ambulance
(applicant) seeks registration on the Principal Register of
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91187537
2
the mark depicted below, for Class 39 services identified in
the application as “ambulance transport services.”1

AmeriCares Foundation, Inc. (opposer) has opposed
registration of applicant’s mark, alleging likelihood of
confusion under Trademark Act Section 2(d), 15 U.S.C.
§ 1052(d), as its ground of opposition. Opposer alleges
prior common-law rights in the mark AmeriCares and ownership
of three previously-registered AmeriCares marks (set out
below), and that the mark applicant seeks to register, for
the services identified in the application, so resembles
opposer’s previously-used and registered mark(s) as to be
likely to cause confusion, mistake, or to deceive.
The first of opposer’s pleaded registrations is of the
mark AMERICARES, registered on the Principal Register in
standard character form for Class 36 services identified in
the registration as “charitable fund raising services to

1 Application Serial No. 78181183, filed on November 3, 2002.
The application is based on use in commerce under Trademark Act
Section 1(a), 15 U.S.C. §1051(a). May 6, 1996 is alleged in the
application as the date first use of the mark and the date of
first use of the mark in commerce.

Opposition No. 91187537
3
support the distribution of food, clothing, medicine and
medical services.”2
Opposer’s second pleaded registration is of the mark
depicted below, registered on the Principal Register, again
for Class 36 services identified in the registration as
“charitable fund raising services to support the
distribution of food, clothing, medicine and medical
services.”3

Opposer’s third pleaded registration is of the mark
depicted below, registered on the Principal Register (with a
disclaimer of the words FREE CLINICS) for Class 42 services
identified in the registration as “providing primary health
care services on a non-profit basis to uninsured and
underinsured persons.”4

2 Registration No. 2310959, issued on January 25, 2000. Section
8 affidavit accepted; Section 15 affidavit acknowledged.
Renewed.

3 Registration No. 2310960, issued on January 25, 2000. Section
8 affidavit accepted; Section 15 affidavit acknowledged.
Renewed.

4 Registration No. 2533777, issued on January 29, 2002. Section
8 affidavit accepted; Section 15 affidavit acknowledged.
Renewed.

Opposition No. 91187537
4

Applicant filed an answer to the notice of opposition,
by which it denied the allegations essential to opposer’s
Section 2(d) claim.
Both parties presented evidence at trial, and the case
is fully briefed.5
We have considered all of the evidence of record and
all of the parties’ arguments. Based on the evidence
discussed below, and for the reasons discussed below, we
SUSTAIN the opposition.

THE EVIDENCE OF RECORD6

5 Applicant has filed a motion to strike opposer’s reply brief on
the ground of untimeliness, the brief being filed five days late.
A ruling on the motion was deferred until final hearing. We find
that opposer has shown excusable neglect for the late filing, for
the reasons set forth in its response to the motion to strike.
Accordingly, and in our discretion, we deny applicant’s motion to
strike and we have considered opposer’s reply brief. We note
that our decision would be the same even if we had granted the
motion to strike.

6 In appendices to their briefs, each party has objected to most
of the other’s evidence on various grounds. We note that
applicant’s counsel did not appear at opposer’s testimony
depositions of Ms. Shattuck and Mr. Kramer, and opposer’s counsel
did not appear at applicant’s testimony depositions of Mr.
Summers, Ms. Osborn, and Mr. Samuel. To the extent that the
objections asserted with the parties’ briefs on the case should
have been made at the depositions, we deem them to be waived and
Opposition No. 91187537
5
During its main testimony period, opposer submitted the
following evidence: (1) the testimony deposition of its
Chief of Staff Carol Shattuck and Exh. Nos. 1-52 thereto
(Shattuck Test. Depo.); the testimony deposition of
opposer’s counsel Nathaniel Kramer and Exh. Nos. 53-107
thereto (Kramer Depo.); and (3) its Notice of Reliance
(Opposer’s NOR) on certain of applicant’s discovery
responses (Opposer’s NOR Exh. 1), various publications and
documents retrieved from the Internet (Opposer’s NOR Exh.
Nos. 2-6); and certain documents retrieved from the USPTO
databases (Opposer’s NOR Exh. Nos. 7-9).
During its testimony period, applicant submitted the
following evidence: (1) the testimony deposition of its
President and CEO, Michael Scott Summers (Summers Depo.);
(2) the testimony deposition of applicant’s counsel’s
employee Channing Noel Osborn and Exh. Nos. 38-59 thereto
(Osborn Depo.); (3) the testimony deposition of applicant’s
counsel Ehab Samuel and Exh. Nos. 60-63 thereto (Samuel

shall give them no consideration. See Wright Line Inc. v. Dana
Safe Services Corp., 229 USPQ 769 (TTAB 1985); see also Hornby v.
TJX Companies, Inc., 87 USPQ2d 1411, 1417 (TTAB 2008). We also
note that most of the parties’ objections go largely to the
weight to be accorded the evidence, and we have considered them
accordingly. As for the remaining objections (e.g., on the
ground of hearsay), we will not rule on them individually, and in
our review and analysis of the evidence we have considered only
the objections to the specific evidence which is pertinent to our
outcome-determinative findings of fact, as necessary. See Kohler
Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100 (TTAB 2007).
Unless otherwise indicated in this opinion in discussing the
evidence, these objections from both parties are overruled.

Opposition No. 91187537
6
Depo.); its Notice of Reliance (Applicant’s NOR) on excerpts
from Ms. Shattuck’s discovery deposition and Exh. Nos. 8-24,
30, and 32-37 thereto (Shattuck Disc. Depo.) (submitted as
applicant’s NOR Exh. 1), and certain of opposer’s discovery
responses. (Applicant’s NOR Exh. Nos. 2-3).
During its rebuttal testimony period, opposer submitted
its second Notice of Reliance (Opposer’s Second NOR), on
certain additional excerpts and exhibits from Ms. Shattuck’s
discovery deposition.

INITIAL FINDINGS OF FACT.
The evidence of record establishes, and we find, the
following pertinent facts regarding the parties and their
activities. We also shall make and discuss additional
findings of fact later in this opinion, as appropriate.

Opposer.
Opposer, AmeriCares Foundation, Inc., is a non-profit
charitable organization which, since 1982, has solicited and
received financial support from individuals, corporations
and foundations, as well as gift-in-kind donations from
corporate donors such as pharmaceutical and medical supply
companies, for the purpose of distributing medicines,
medical supplies, medical services, food and clothing, inter
alia, to the needy and to disaster victims around the
Opposition No. 91187537
7
country and around the world. (Shattuck Test. Depo. at 5-6,
33, 46-47.)
Opposer, through its charitable fundraising operations,
coordinates and provides for emergency disaster relief at
natural disasters in the United States and around the world.
Examples of these emergencies include Hurricanes Katrina,
Rita and Ike, the terrorist attacks of September 11, 2001,
floods in Washington State, tornadoes in Kansas, and
wildfires in California. (Shattuck Test. Depo. at 12-17,
26-30, 84.) Opposer responded to 32 emergencies in twenty-
six countries in 2008. (Shattuck Test. Depo. at 43-44.)
Opposer’s disaster relief activities include the
distribution of medicines, medical supplies and other needed
supplies to the actual providers on the ground, such as
local hospitals and clinics. Opposer also coordinates and
funds teams of volunteer medical professionals and other
volunteers who travel to the disaster site. (Shattuck Test.
Depo. at 12-17, 26-29, 55-56.)
Opposer has a bus which traveled to Hurricanes Katrina
and Ike and was used as an onsite primary healthcare clinic
when local facilities were unavailable. (Shattuck Test.
Depo. at 9-10, 26-29.) The side of the bus displayed
opposer’s “AmeriCares Free Clinics” mark. (Shattuck Test.
Depo. at 9-10.)
Opposition No. 91187537
8
At the disaster sites, it is common for opposer’s
“AmeriCares” mark and name to be displayed on volunteers’
clothing, on banners, and on pallets of supplies. (Shattuck
Test. Depo. at 15-17, 26-27, Exh. 8.)
In addition to its disaster relief activities, opposer
funds and operates community free clinics which provide
primary healthcare to uninsured individuals who do not have
access to primary care. (Shattuck Test. Depo. at 7.)
Opposer’s free clinic services complement existing community
resources for providing healthcare to the uninsured.
(Shattuck Test. Depo. at 9, Exh. 5, p. 2.) The clinics are
staffed by opposer’s volunteer staff and by medical
professionals who provide their services on a volunteer
basis. (Shattuck Test. Depo. at 7-10, 39-41.) The primary
healthcare services provided by opposer’s free clinics
include basic continuity care, as well as episodic care like
tending to cuts and providing medications for fevers. If a
patient comes to the clinic with a medical emergency, the
clinic will call 911 for an ambulance to take the patient to
the hospital. (Shattuck Disc. Depo. at 13, 16.)
Opposer also donates medicines and supplies to other
clinics, hospitals and community healthcare facilities in
thirty-four states and eighty-seven countries. (Shattuck
Test. Depo. at 19-20, 42-44.)
Opposition No. 91187537
9
Opposer also operates a program called “Patient
Assistance Program” in the United States, through which
pharmaceutical companies donate medicines to opposer which
opposer then distributes to healthcare providers around the
country. Three million prescriptions worth approximately
two billion dollars have been distributed through the
program. (Shattuck Test. Depo. at 17-18.)
Opposer also funds medical outreach and volunteer trips
by teams traveling around the world to distribute medicines
and supplies to needy areas without adequate healthcare
access. (Shattuck Test. Depo. at 44-45.)
All of opposer’s activities and programs are supported
by the charitable donations opposer receives from
individuals, corporations and foundations. (Shattuck Test.
Depo. at 41.)
Opposer provides information about its activities, and
solicits and receives a substantial portion of its
donations, through its Internet websites, as well as through
direct mail solicitations. (Shattuck Test. Depo. at 37-39,
48-52, 54-56 and 66-67.)
Opposer also commonly receives donations as a result of
publicity it receives in the media at times of disasters and
emergencies. (Shattuck Test. Depo. at 35-39, 57-58, 66-67,
Exh. Nos. 18, 21-26; Kramer Depo. Exh. Nos. 87-99.)
Opposition No. 91187537
10
Opposer also commonly receives donations by means of
third-party fundraising drives and events. (Shattuck Test.
Depo. at 68-70, 84-90, Exh. Nos. 39, 48-52.)
In total since 1982, opposer has collected and
distributed nine billion dollars in goods and services in
the United States and around the world, including one
billion dollars in each of the years 2008 and 2009.
(Shattuck Test. Depo. at 20-21.)
Opposer has spent 74 million dollars in promoting its
marks and services between 1989 and 2009. (Shattuck Test.
Depo. at 48-52.)
In 2008, Forbes magazine ranked opposer as the seventh-
largest charity organization in the United States. In 2009,
the philanthropy organization trade journal Chronicle of
Philanthropy also ranked opposer the seventh largest
charitable foundation in terms of private donations
received. (Shattuck Test. Depo. at 45-47, Exh. 28; Kramer
Depo. Exh. 107.)
Opposer does not and has never transported medical
patients or disaster victims from one place to another.
(Shattuck Disc. Depo. at 10-12.)

Applicant.
Opposition No. 91187537
11
Applicant, AmeriCare Ambulance, operates a fleet of
emergency transport vehicles, i.e., ambulances, to transport
sick and injured patients. (Summers Depo. at 11-13, 32.)
Applicant employs medical professionals such as
emergency medical technicians (EMT’s), paramedics and
critical care nurses, who accompany the patient in the
ambulance and provide appropriate emergency medical care
which may be necessary to stabilize the patient in transit.
(Summers Test. Depo. at 11-13.) Applicant also provides
“team type of transports where there could be a medical
doctor on board, anything in between a patient, a specialty
patient needs.” (Summers Test. Depo. at 13.)
Aside from rendering emergency medical care necessary
for the stabilization of patients in transit to the hospital
or other care facilities, applicant does not perform or
render any type of medical care or treatment. (Summers
Test. Depo. at 20-21, 41-43.)
Applicant’s ambulances also transport non-critical
patients to and from the hospital or other care facilities
on a non-emergency basis. (Summers Test. Depo. at 11.)
Applicant currently renders its ambulance services
primarily in San Diego, Los Angeles, Orange and Riverside
Counties in Southern California, and occasionally in Nevada
and Arizona. (Summers Depo. at 11.)
Opposition No. 91187537
12
Applicant has qualified for and is included on the
Federal Emergency Management Agency (FEMA)’s list of
certified emergency responders, and has provided ambulance
transport services for FEMA at disasters and other
emergencies around the country, including Hurricanes
Katrina, Rita and Ike. (Summers Depo. at 14-15, 24-27;
Shattuck Test. Depo. Exh. 46.) Applicant also has qualified
for and rendered disaster relief services for local
government authorities in Southern California at various
emergencies such as wildfires. (Shattuck Test. Depo. Exh.
47.) Applicant advertises its disaster-relief activities on
its website. (Shattuck Test. Depo. Exh. Nos. 46-47.)
Applicant markets its services primarily to government
agencies and other types of entities which require or
arrange for the transport of patients. These include local
government agencies and departments such as 911 dispatch
centers and fire departments, federal agencies such as FEMA,
healthcare and medical care facilities such as hospitals,
private nursing homes and other board and care facilities,
and managed care organizations. (Summers Depo. at 13-14,
21, 33.)
Applicant primarily obtains its business by bidding on
contracts directly with these agencies and entities, for
which applicant must qualify by satisfying and maintaining
Opposition No. 91187537
13
compliance with various licensing and certification
requirements. (Summers Depo. at 11-12, 21-24, 33-34.)
Pursuant to its contracts with local authorities,
applicant also transports indigent patients in the community
in response to calls from county dispatch offices which deal
specifically with providing ambulance services to indigent
patients. (Summers Depo. at 13-14.)
For its ambulance services rendered to FEMA and in
connection with the transport of indigent patients for local
government agencies, applicant is paid directly by those
agencies. Otherwise, although the patient is ultimately
responsible for payment, applicant bills and is paid by the
patient’s insurance provider, with a courtesy notice of the
bill being sent to the patient. (Summers Depo. at 14.)
Applicant also advertises its ambulance services in the
yellow pages, but currently receives no business from that
advertising. (Summers Depo. at 34.)
Applicant is a for-profit company which does not engage
in any charitable fundraising, nor does it render its
ambulance services on a charitable basis. (Summers Depo. at
18-19, 43.)7

7 The evidence does not support opposer’s contention that
applicant engages in charitable fundraising. Opposer’s
contention is based solely on the fact that applicant’s HIPAA-
mandated written privacy policy includes a reference to
charitable fundraising. (Kramer Depo. at 23-24, Exh. 103.)
However, this language obviously is boilerplate language mandated
by HIPAA for all providers of healthcare-related services. HIPAA
Opposition No. 91187537
14

THE PARTIES’ 2003 UDRP DISPUTE
Initially, we note that both parties have cited to and
relied on a 2003 WIPO opinion involving their respective
domain names. (Shattuck Test. Depo. Exh. 45; Shattuck Disc.
Depo. Exh. 36.) However, the findings and decision in that
proceeding are not binding on us, and we find that they are
not relevant to the issues in this case in any event. We
find that they are entitled to no probative value in the
present case.

APPLICANT’S LACHES/ACQUIESCENCE ARGUMENTS
Citing Mr. Summers’ testimony, applicant contends that
it made efforts after the parties’ 2003 WIPO case to resolve
the parties’ trademark dispute, including challenging
opposer to file a lawsuit by which the parties’ respective
rights in their marks would be determined. (Summers Depo.
at 28-30; Shattuck Disc. Depo. Exh. 37.) Applicant contends
that opposer did not respond to these efforts and never

Administrative Simplification Regulations, 45 C.F.R. §§160 and
164. We find that this HIPAA-mandated language does not
establish that applicant, or ambulance companies in general, or
even healthcare providers in general, all of which are subject to
the privacy disclosure requirements of HIPAA, actually,
necessarily or normally engage in charitable fundraising. Mr.
Summers testified that applicant does not engage in fundraising
and that it does not render its ambulance services on a
charitable basis. We find that nothing in the record contradicts
his testimony, including the mandatory HIPAA language found in
applicant’s privacy policy.

Opposition No. 91187537
15
filed a lawsuit or otherwise object to applicant’s use of
its mark. (Summers Depo. at 28-31.) Applicant contends
that, relying on opposer’s inaction, applicant spent a
significant amount of money and time afterwards to expand
its business. (Summers Depo. at 32-35.) Applicant contends
that it would be greatly prejudiced if it were now to be
required to go the expense of adopting a new mark. (Summers
Depo. at 35-42.)
Applicant’s contentions are unavailing. Although not
denominated as such, applicant is essentially attempting to
assert the defenses of laches and/or acquiescence, defenses
which generally are not available in an opposition
proceeding.8 See Nat’l Cable Television Ass’n Inc. v.
American Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424
(Fed. Cir. 1991); Barbara’s Bakery Inc. v. Landesman, 82
USPQ2d 1283, 1292 n.14 (TTAB 2007). Applicant is seeking a
federal registration of its mark, nationwide in scope and
effect. When the mark was published for opposition on July
8, 2008, opposer filed a timely notice of opposition to
issuance of that registration. Contrary to applicant’s
argument, we find that opposer’s failure to file a lawsuit
or otherwise object to applicant’s geographically limited

8 This case does not present the circumstances where laches would
be applicable. Land O’Lakes Inc. v. Hugunin, 88 USPQ2d 1958,
1959 (TTAB 2008) (laches may be defense where opposer failed to
object to an applicant’s earlier registration of the same mark
for the same goods)
Opposition No. 91187537
16
use of its mark prior thereto does not weaken opposer’s
likelihood of confusion claim, and that it has no probative
significance in the present case.

OPPOSER’S BURDEN.
To prevail in this opposition proceeding, opposer must
establish (1) its standing to oppose and (2) at least one
statutory ground of opposition to registration of
applicant’s mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Saul Zaentz
Co. v. Bumb, 95 USPQ2d 1723, 1726 (TTAB 2010).

OPPOSER’S STANDING.
Opposer has properly made its pleaded registrations of
record, which establish that the registrations are in effect
and are owned by opposer. (Shattuck Test. Depo. Exh. 31-
34.) In view thereof, and because opposer has established
that its pleaded Section 2(d) claim is not frivolous, we
find that opposer has a real interest in the outcome of this
proceeding and thus a reasonable basis for believing that it
would be damaged by the issuance to applicant of the
registration applicant seeks. Accordingly, we find that
opposer has established its standing to oppose registration
of applicant’s mark. See Cunningham v. Laser Golf Corp.,
supra, 55 USPQ2d 1842, 1844. See also Lipton Industries,
Opposition No. 91187537
17
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982).

OPPOSER’S SECTION 2(d) CLAIM.
Trademark Act Section 2(d) bars registration of an
applicant’s mark if it “... so resembles a mark registered
in the Patent and Trademark Office, or a mark or trade name
previously used in the United States by another and not
abandoned, as to be likely, when used on or in connection
with the goods [or services] of the applicant, to cause
confusion, or to cause mistake, or to deceive.” Thus, to
prevail on its Section 2(d) claim, opposer must establish
(1) its priority of use of its pleaded mark(s) and/or its
ownership of registration(s) of its pleaded mark(s), and (2)
the existence of a likelihood of confusion between
applicant’s mark and opposer’s pleaded mark(s).
As noted above, opposer bases its Section 2(d) claim on
its ownership of three different registrations noted above,
and associated common-law rights. Two of the registrations
are of the mark “AmeriCares” (one in standard character form
and the other in a stylized form), both for Class 36
charitable fundraising services. The third registration is
of the stylized mark “AmeriCares Free Clinics,” for Class 42
non-profit primary health care services.

Opposition No. 91187537
18
Priority.
Opposer has properly made of record its pleaded
registrations of its Class 36 “AmeriCares” marks and its
Class 42 “AmeriCares Free Clinics” mark, which establish
that the registrations are in effect and are owned by
opposer. (Shattuck Test. Depo. Exh. 31-34.) Accordingly,
Section 2(d) priority is not at issue in this case as to the
marks and the services covered by those registrations, and
opposer therefore is not required to prove actual priority
of use with respect to those marks and services. See King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974); Miss Universe L.P. v. Community
Marketing Inc., 82 USPQ2d 1562, 1566 (TTAB 2007).9

Likelihood of Confusion.
Our likelihood of confusion determination under Section
2(d) is a legal conclusion, based on an analysis of all of
the facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue (the du Pont

9 Applicant argues with respect to opposer’s Class 42 “AmeriCares
Free Clinics” registration that it is applicant that is in fact
the prior user of its mark vis-à-vis opposer’s AmeriCares Free
Clinics mark, and also argues that opposer has not used this mark
in interstate commerce but only in intrastate commerce in
Connecticut. (Applicant’s brief at 24-26.) These arguments are
unavailing, because they essentially are challenges to the
validity of opposer’s Class 42 registration which will not be
heard in the absence of a counterclaim for cancellation of that
registration. See Trademark Rule 2.106(b)(2)(ii), 37 C.F.R.
§2.106(b)(2)(ii). Applicant did not file such a counterclaim.
Opposition No. 91187537
19
factors). In re E.I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See M2 Software Inc. v. M2
Communications Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1946
(Fed. Cir. 2006); Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005). “While it must consider each
factor for which it has evidence, the Board may focus its
analysis on dispositive factors, such as similarity of the
marks and relatedness of the goods [and/or services].” Han
Beauty Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d
1557, 1559 (Fed. Cir. 2001). See also In re Dixie
Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed.
Cir. 1997 (“...not all of the [du Pont] factors are relevant
or of similar weight in every case. Indeed, any one of the
factors may control a particular case” (internal citations
and quotation marks omitted).

Factor 1: Similarity of the Marks.
Under the first du Pont factor, we determine the
similarity or dissimilarity of applicant’s mark and
opposer’s mark(s) when they are viewed in their entireties
in terms of appearance, sound, connotation and commercial
impression. See Palm Bay Imports, Inc., supra, 73 USPQ2d
1689, 1692.
Opposition No. 91187537
20
The test, under the first du Pont factor, is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in their overall commercial impressions
as to be likely to cause confusion when used on or in
connection with the goods and/or services at issue. This
necessarily requires us to take into account the fallibility
of memory over time and the fact that the average purchaser
retains a general rather than a specific impression of
trademarks. See Time Warner Entertainment Co. v. Jones, 65
USPQ2d 1650, 1660 (TTAB 2002); In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467, 1468 (TTAB 1988); Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Although the marks at issue must be considered in their
entireties, it is well-settled that one feature of a mark
may be found to be more significant than another in terms of
the mark’s function as a source-indicator, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark,
and in comparing the marks at issue under the first du Pont
factor. See In re Chatam International Inc., 380 F.3d 1340,
71 USPQ2d 1944, 1946 (Fed. Cir. 2004). “Indeed, this type
of analysis appears to be unavoidable.” In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Opposition No. 91187537
21
We begin with a comparison of applicant’s mark and
opposer’s stylized mark. Applicant’s mark is depicted
below:

Opposer’s mark is depicted below:

We find that, in each of the marks, it is the literal
element of the mark, i.e., “AmeriCare” in applicant’s mark
and “AmeriCare” in opposer’s mark, that dominates. Both
marks include stylized lettering and design features, with
the stylized letter “A” in applicant’s mark and the stylized
flag design in opposer’s mark. However, we find that when
each of the marks is viewed in its entirety, it is the word
portion of each mark that dominates the source-indicating
commercial impression of the mark.
Comparing the marks in terms of appearance, we find
that the marks are similar in that AMERICARE and AMERICARES
look essentially identical, and both marks display the
letters “A” and “C” as capital letters, with the remaining
lettering being lower-case. The differences in the marks’
Opposition No. 91187537
22
respective design elements and font, and the presence of the
“S” at the end of opposer’s mark, do not overcome these
basic points of visual similarity between the marks.
In terms of sound, we find that the marks are identical
but for “S” on the end of applicant’s mark, and that the
marks overall are essentially identical in terms of sound.
In terms of connotation, the marks are similar in that
they are both telescoped combinations of the words “America”
and “care” or “cares.” The marks arguably are dissimilar to
the extent that the word “cares” in opposer’s mark suggests
a verb, i.e., that “America cares,” while “care” in
applicant’s mark suggests a noun, i.e., “America care.”
However, we find that this point of dissimilarity is too
subtle to significantly distinguish the marks in terms of
connotation.
In terms of overall commercial impression, we find that
the marks are fundamentally similar because they both
consist the of the telescoped words “America,” i.e., with
“America” shortened to “Ameri-” beginning with a capital
“A”, combined with the word “care”/“cares” with a capital
“C.” Applicant argues that the letter “A” in its mark is
stylized to represent an EKG readout, which when combined
with the nature of applicant’s services, i.e., ambulance
services, gives applicant’s mark a commercial impression
suggesting medical services. However, we find that this is
Opposition No. 91187537
23
outweighed by the overall similarity in the marks’
commercial impressions as source-indicators.
Comparing applicant’s mark to opposer’s registered
standard character AMERICARES mark, we likewise find the
marks to be highly similar. Opposer’s AMERICARES mark is a
standard character mark which is not restricted as to its
manner of display and therefore can be displayed in the same
font and style as applicant’s mark. See Citigroup Inc. v.
Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253
(Fed. Cir. 2011.) Also illustrative of the scope of
opposer’s rights in its standard character registered mark
is the font in which opposer’s registered AMERICARE FREE
CLINICS mark already is actually displayed. See id. We
note that applicant’s mark is displayed in essentially the
same font.
Considering opposer’s marks and applicant’s mark in
their entireties, we find them to be similar, and indeed
highly similar. This finding under the first du Pont factor
supports a conclusion that a likelihood of confusion exists.

Factor 2: Similarity of the Services.
Under the second du Pont factor we consider the
similarity or dissimilarity of the parties’ respective
services. See Hewlett-Packard Co. v. Packard Press Inc.,
281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002).
Opposition No. 91187537
24
In making this determination, it is not necessary that
the respective services be identical or even competitive in
order to find that they are related for purposes of our
likelihood of confusion analysis. The issue is not whether
the relevant purchasing public would confuse the services
themselves. Rather, the services need only be sufficiently
related that the relevant purchasers would be likely to
assume, upon encountering the services rendered under the
marks at issue, that the services originate from, are
sponsored or authorized by, or are otherwise connected to
the same source. See Black & Decker Corp. v. Emerson
Electric Co., 84 USPQ2d 1482, 1492 (TTAB 2007); In re
Wilson, 57 USPQ2d 1863, 1866-67 (TTAB 2001).
In addition, we note the well-settled principle that
“... the greater the degree of similarity in the marks, the
lesser the degree of similarity that is required of the
products or services on which they are being used in order
to support a holding of likelihood of confusion.” In re
Concordia Int’l Forwarding Corp., 222 USPQ 355 at 356 (TTAB
1983). As discussed above, we find that the parties’ marks
are very similar, and we shall keep that finding in mind in
making our determination under the second du Pont factor.
Applicant’s services, as identified in its application,
are “ambulance transport services.” Opposer’s services, as
identified in its two Class 36 AMERICARES registrations, are
Opposition No. 91187537
25
“charitable fund raising services to support the
distribution of food, clothing, medicine and medical
services.” For purposes of our analysis of the second du
Pont factor, we find that the most pertinent reading of
opposer’s identification of services is “charitable
fundraising services to support the distribution of ...
medical services.”
“Medical services” being broadly identified in
opposer’s identification of services, we must presume that
they encompass medical services of all natures and types,
regardless of what the record might show to be the actual
nature of the services as rendered. Packard Press Inc. v.
Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1354
(Fed. Cir. 2000); Canadian Imperial Bank of Commerce,
National Association v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813, 1815 (Fed. Cir. 1987).
As noted above, the record establishes that applicant
employs medical professionals such as emergency medical
technicians, paramedics and critical care nurses, who
accompany the patient in the ambulance and provide
appropriate emergency medical care which may be necessary to
stabilize the patient en route to the hospital or other care
facility. Applicant also provides “team type of transports
where there could be a medical doctor on board, anything in
between a patient, a specialty patient needs.” We find that
Opposition No. 91187537
26
applicant’s provision of such emergency medical care to the
patient en route to the hospital or other care facility is a
significant and indeed an integral feature and function of
“ambulance transport services,” as rendered by applicant
and, presumably, by ambulance transport companies generally.
Based on this evidence, we find that “ambulance
transport services,” which by their very nature involve
transportation of medical patients to hospitals or other
medical care facilities, and which also integrally involve
the provision of in-transit medical care and treatment to
such patients, are encompassed by and within the broadly-
identified “medical services” set forth in opposer’s
identification of services as a specific focus of opposer’s
charitable fundraising services. As such, for purposes of
this case we effectively read opposer’s identification of
services, in pertinent part, as “charitable fundraising
services to support the distribution of ... medical
services, including ambulance transport services.”
Applicant argues that “[t]he common denominator for all
services provided by Applicant is transportation. ... The
extent of any medical ‘treatment’ provided to the patients
is for stabilization during their transport. ... Applicant’s
ultimate goal is to transport the patient safely from point
A to point B.” (Applicant’s Brief at 6.) However, we find
that applicant, in providing emergency medical care and
Opposition No. 91187537
27
treatment to the patients it transports, is not merely
transporting patients from point A to point B, but is also
rendering “medical services” to those patients. Emergency
stabilization medical treatment is still medical treatment,
and we find that the provision of such medical treatment
makes ambulance transport services “medical services.” We
also note applicant’s argument, discussed above in
connection with the first du Pont factor, that the stylized
EKG readout incorporated into the letter “A” in its mark
serves to emphasize the medical treatment aspect of its
ambulance services.
Moreover and in any event, we also find that the very
activity of transporting emergency medical patients to the
hospital, in and of itself, constitutes “medical services,”
since ambulance transport services play a basic and common
role in the delivery of “medical services” to medical
patients in need. This case is distinguishable from Edwards
Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399 (TTAB
2009), upon which applicant relies. In that case, the Board
found that goods are not related merely because they both
can be deemed to be within the broadly-defined medical
field. However, the case involved highly specialized and
sophisticated medical products, i.e., “heart monitors” and
“near real-time computer monitoring system comprised of a
software application and database that anticipates and
Opposition No. 91187537
28
detects possible adverse drug events, and alerts healthcare
providers to adverse drug events,” that were marketed to
sophisticated highly trained purchasers in completely
different hospital departments. We find in this case, by
contrast, that “ambulance transport services,” which involve
transport of medical patients to medical facilities and the
provision of emergency medical treatment en route, clearly
are basic and common “medical services,” not highly
specialized medical equipment.
Additionally, even if we assume that applicant’s
“ambulance transport services” are not legally encompassed
within the “medical services” identified in opposer’s
registrations as a specific focus of opposer’s “charitable
fundraising services,” we still find as a factual matter,
for all of the reasons stated above, that “ambulance
transport services” and “medical services” are at the very
least closely related for purposes of the second du Pont
factor.
Also, leaving “medical services” aside, we find that
applicant’s “ambulance transport services” are related to
opposer’s “charitable fundraising services,” for purposes of
the second du Pont factor. We note that the underlying
purpose and basis of opposer’s services, as they are
identified in opposer’s identification of services, are
charitable fundraising services. As discussed above, we
Opposition No. 91187537
29
find that applicant does not engage in charitable
fundraising services. Therefore and to that extent,
applicant’s services as identified in the application and
opposer’s services as identified in their entirety in
opposer’s registrations are not the same. However, as noted
above, it is not necessary that the parties’ services be
identical or even competitive in order to find that they are
similar for purposes of the second du Pont factor.
The record shows that opposer’s charitable fundraising
is directed in large part to the support and distribution of
a variety of medical-related goods and services. We find
that that the relevant purchasing public, who in this case
are opposer’s donors and potential donors (see discussion
below), are likely to assume that ambulance services also
are one of the medical-related activities that opposer’s
charitable foundation funds and sponsors, i.e., that they
are opposer’s “ambulance arm,” as opposer calls them in its
briefs. Thus, even though applicant does not engage in
charitable fundraising, we find that the parties’ services
are related on this basis.
Specifically with regard to disaster relief, the record
shows that opposer provides, sponsors and coordinates a
broad range of goods and services at disaster sites, with a
significant focus on medical-related activities. The record
also establishes that ambulance services are among the
Opposition No. 91187537
30
services that are rendered at disaster sites. Applicant
itself renders ambulance services at disaster sites, and
advertises that fact on its website. We find that potential
donors who want to help support opposer’s disaster-relief
efforts are likely to assume that ambulance services
rendered at a disaster site under the mark “AmeriCare” are
among the range of medical-related activities provided,
coordinated or sponsored by opposer’s well-known disaster
relief charitable organization.
Applicant contends that “[m]edical transportation at
major disasters in the U.S. is merely a small portion of
Applicant’s day-to-day business operations.” (Applicant’s
Brief at 31.) However, even if that is currently true, it
has no bearing on our analysis, under the second du Pont
factor, of applicant’s services as they are identified in
the application. Applicant also argues that the parties’
disaster-relief activities are dissimilar because opposer’s
activities are volunteer-based and self-funded, while
applicant is a for-profit company that renders and is paid
for its ambulance services at disaster sites under contract
directly with FEMA. Even if that is true, however, we find
that it is entitled to little or no probative value under
the second du Pont factor, not least because nothing in the
record would show that opposer’s potential donors, including
members of the general public, necessarily would be aware of
Opposition No. 91187537
31
(or attribute any source-distinguishing significance to)
such details as to how disaster-relief efforts are
coordinated at disaster sites. Applicant also contends that
opposer and applicant themselves have not actually
encountered each other at past disaster sites where both of
them were operating (such as Hurricanes Katrina, Ike and
Rita), but we find this fact, even if true, to be of
essentially no probative value under the second du Pont
factor.
We find a similar situation with respect to the various
medical-related charitable activities opposer supports in
the local community, including its free clinics for the
uninsured. Opposer provides its free clinic services so as
to complement existing community resources for delivery of
healthcare to the uninsured. As required by its contracts
with local authorities, applicant’s ambulance services
specifically include ambulance services provided to indigent
patients in the community. Opposer’s potential donors could
readily assume that “AmeriCare” ambulance services provided
to the indigent are among or related to opposer’s various
healthcare activities serving the local community, such as
its free clinic services which are provided so as to
Opposition No. 91187537
32
complement other community healthcare resources for the
uninsured.10
For all of these reasons, we find that the parties’
respective services are sufficiently related to support a
finding that they are similar under the second du Pont
factor. This is especially so given the high degree of
similarity between the parties’ marks, which, as noted
above, lessens the degree of similarity between the parties’
services that is required to support a finding that a
likelihood of confusion exists.
In our overall likelihood of confusion analysis in this
case, this finding under the second du Pont factor supports
a conclusion that confusion is likely.

Factor 3: Similarity of Trade Channels and Purchasers.
Under the third du Pont factor, we determine the
similarity or dissimilarity of the trade channels in which
and, relatedly, the classes of purchasers to whom, opposer’s
and applicant’s respective services are or would be
marketed.
Because there are no limitations or restrictions as to
trade channels or classes of purchasers in applicant’s and
opposer’s respective identifications of services, we presume

10 Also, as noted above, when uninsured emergency patients come
into opposer’s free clinics, the clinic calls the 911 dispatcher
and those patients are taken to the hospital, by ambulance.
Opposition No. 91187537
33
that the services are or would be marketed in all normal
trade channels for such services and to all normal classes
of purchasers of such services, regardless of what any
evidence might show to be differences in the actual trade
channels and purchasers for applicant’s and opposer’s
services. See Packard Press Inc. v. Hewlett-Packard Co.,
supra, 56 USPQ2d 1351, 1355.
We find that opposer’s “purchasers” in this case, for
purposes of the third du Pont factor, are the current donors
and potential donors to opposer’s charitable foundation,
including individual members of the general public.
Applicant acknowledges as much, asserting in its brief that
“Opposer is a not-for-profit entity, whose targeted
consumers are donors, mainly individuals, corporations and
foundations” and that opposer’s targeted consumers are
“members of the general public who donate to charity.”
(Applicant’s Brief at 30, 32.)
As for opposer’s trade channels, the record shows that
opposer’s donors and potential donors from the general
public may learn of opposer’s charitable foundation, and may
donate or consider donating to the foundation, in several
ways. For example, opposer advertises its foundation
through direct mailings to donors and potential donors.
Opposer’s donors and potential donors may learn of and
contact opposer through opposer’s substantial Internet
Opposition No. 91187537
34
presence, when they search the Internet for charities to
which they can donate, especially at times of disasters and
emergencies. Opposer’s donors and potential donors also may
learn of opposer’s foundation through media coverage of its
charitable activities, especially during times of disasters
and emergencies. Donors and potential donors also may learn
of opposer’s foundation through third-party charity drives
or fundraisers at times of disasters and emergencies, when
opposer’s foundation is identified as a charity which donors
and potential donors are encouraged to support.11
As for applicant, we find that applicant’s targeted
purchasers primarily are entities which require or arrange
for the transport of medical patients. These include local
government agencies and departments such as 911 dispatch
centers, county dispatch offices which arrange for the
transport of indigent patients, fire departments, federal
agencies such as FEMA, healthcare and medical care
facilities such as hospitals, private nursing homes and
other board and care facilities, and managed care

11 Citing opposer’s response to applicant’s Interrogatory No. 5
(Applicant’s NOR Exh. 2), applicant argues that “no one hires
Opposer to provide any service,” and that “Opposer can’t even
identify its channel of trade.” However, we find that charitable
fundraising services do not fit cleanly within the usual analysis
of commercial purchasers and trade channels under the third du
Pont factor, as opposer persuasively points out in its response
to the interrogatory. We find, for purposes of the third du Pont
factor, that opposer’s purchasers are its donors and potential
donors, and that its trade channels are those identified above.

Opposition No. 91187537
35
organizations. As for trade channels, applicant primarily
obtains its business by engaging in a detailed process of
competitive bidding for contracts directly with these
agencies and entities, for which applicant must qualify by
satisfying and maintaining compliance with various stringent
licensing and certification requirements.
However, we find in this case that the purchasers of
applicant’s “ambulance transport services,” for purposes of
the third du Pont factor, also include the actual patients
it transports to and from the hospital, nursing homes, etc.,
i.e., the persons to and for whom applicant is actually
rendering its ambulance transport services.
In the case of Crocker National Bank v. Canadian
Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d,
Canadian Imperial Bank of Commerce, National Association v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987), the applicant sought to register its mark for
services identified in the application as “banking
services.” In opposition to the opposer’s Section 2(d)
likelihood of confusion claim, the applicant argued and
presented evidence showing that its actual services were
“electronic banking services aimed at sophisticated
corporate customers” such as banks themselves and large
corporations, and that “the purchasing agents of customers
for these services are officers of corporations and banks
Opposition No. 91187537
36
and that the primary way of contacting these customers is by
sales representatives’ making personal calls upon these
officers.” The Board and the court rejected this argument,
finding that because the applicant’s services were
identified broadly as “banking services,” the purchasers of
the services must be presumed to include members of the
general public, i.e., the individual customers to whom
“banking services” are rendered, and not just the
institutional customers to whom the applicant actually was
directly marketing its services.
Similarly in this case, we find that the purchasers of
applicant’s broadly-identified “ambulance transport
services” include the individual patients applicant actually
transports in the course of rendering its ambulance
services, not just the government agencies and other
entities that applicant initially and directly markets its
ambulance services to and contracts with. We also find that
these individual patients/transportees who would be
encountering applicant’s ambulance services as applicant’s
transportees obviously are members of the general public.
As such, they are included among the relevant purchasing
public in this case, i.e., donors and potential donors to
opposer’s charity.
We also note here that the record shows that applicant
advertises its ambulance services in the yellow pages.
Opposition No. 91187537
37
Although applicant currently obtains no business through the
yellow pages, the fact that applicant advertises its
ambulance services in the yellow pages, presumably to the
general public, suggests that members of the general public
are or may be a normal class of purchasers for ambulance
services.
Based on these facts, we find that the parties’ trade
channels and purchasers are similar, to the extent that both
parties are or could be marketing and/or rendering their
respective services to the general public, including to
applicant’s transportees who are also opposer’s donors and
potential donors. This finding under the third du Pont
factor supports a conclusion that a likelihood of confusion
exists.

Factor 4: Conditions of Purchase.
Under the fourth du Pont factor, we consider the
conditions under which the parties’ services are purchased,
including the sophistication of consumers and the care
exercised in purchasing the services. We find that the
agencies and entities to whom applicant directly markets its
services by means of a process of bidding and entering into
contracts are likely to be knowledgeable, careful
purchasers. However, as discussed above, we find that the
relevant purchasers in this case include individual members
Opposition No. 91187537
38
of the general public, including applicant’s transportees,
who are donors and potential donors to opposer’s charity.
We find that these individuals would not necessarily be
knowledgeable and careful in making their decisions to
donate to charity, nor would they necessarily be immune to
source confusion resulting from the parties’ use of their
highly similar marks in connection with their respective
services. There is no evidence that they would be
exercising more than a normal degree of care.
For these reasons, we find that the fourth du Pont
factor, conditions of purchase, weighs in favor of a
conclusion that a likelihood of confusion exists. If it
were to be found to weigh in applicant’s favor, it does so
only to a limited extent in our overall likelihood of
confusion analysis.

Factor 5: Fame of Opposer’s Mark.
Opposer has expressly stated that it is not claiming
that its mark is a famous mark, for purposes of the fifth du
Pont factor. (Opposer’s Reply Brief at 13-14.) However,
opposer does claim that it’s mark is well-known, and we
agree. Opposer’s charitable foundation has been operating
since 1982. In 2008, Forbes magazine and the Chronicle of
Philanthropy ranked opposer as the seventh-largest charity
organization in the United States. In total, opposer has
Opposition No. 91187537
39
collected and distributed nine billion dollars in goods and
services in the United States and around the world. Opposer
has spent over 70 million dollars in promoting its marks and
services between 1989 and 2009.
Based on this evidence, we find that opposer’s
AMERICARES mark is a strong, well-known mark, and that it is
entitled to a broad scope of protection.

Factor 6: Third-party Marks.
Under the sixth du Pont factor, we consider evidence
pertaining to the nature and extent of similar marks in use
in connection with similar services. Evidence of widespread
use of marks similar to opposer’s on services similar to
opposer’s can affect the determination of the strength of
opposer’s mark and the scope of protection to which it is
entitled. Applicant appears to have placed great reliance
on this factor, and we therefore shall discuss applicant’s
evidence in some detail.
Generally, the probative value of evidence under the
sixth du Pont factor is limited absent a showing of the
nature, extent and scope of such third-party uses and of the
public’s likely awareness of such uses. See Han Beauty,
Inc. v. Alberto-Culver Co., supra, 57 USPQ2d 1557, 1561;
Anthony’s Pizza & Pasta Int’l Inc. v. Anthony’s Pizza
Holding Co., 95 USPQ2d 1271, 1277-78 (TTAB 2009); Penguin
Opposition No. 91187537
40
Books Ltd. v. Eberhard, 48 USPQ2d 1280 (TTAB 1998). The
probative value of such evidence also is limited to the
extent that the services in connection with which the third-
party marks are used are not similar to the services at
issue. See Charrette Corp. v. Bowater Communication Papers
Inc., 13 USPQ2d 2040 (TTAB 1989).
Osborn Depo. Exh. 40 is a summary chart based on the
online telephone directory yellowpages.com, which, according
to Ms. Osborn, lists “all AmeriCare companies working in the
medical services.”12 (Osborn Depo. at 9.) The chart
assertedly lists 267 businesses nationwide which apparently
meet Ms. Osborn’s criteria for “the medical services.” This
telephone directory evidence is entitled to some
consideration under the sixth du Pont factor. See Lloyd’s
Food Products Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d
2027, 2029 (Fed. Cir. 1993);13 In re Broadway Chicken Inc.,

12 Osborn Depo. Exh. 40 is based on Osborn Depo. Exh. 39, which
consists of 175 pages of what appear to be individual printouts
of the yellowpages.com listings (and accompanying information)
for all companies, in all fields, which include AMERICARE or a
variant thereof in their names.

13 We note that the specific holding in Lloyd’s was that, in the
summary judgment context in an inter partes proceeding, telephone
directory evidence cannot be ignored and can raise an issue of
fact, under the sixth du Pont factor, which may suffice to
preclude entry of summary judgment on a likelihood of confusion
claim. We note as well that the court also expressly declined to
specify the probative weight to be accorded such telephone
directory evidence for purposes of determining the strength of
the mark under the sixth du Pont factor, or for purposes of the
ultimate likelihood of confusion analysis and determination.

Opposition No. 91187537
41
38 USPQ2d 1559 (TTAB 1996).14 However, its probative value
is limited to the extent that it does not demonstrate the
extent of this third-party use and the public’s awareness of
it, and to the extent that the third parties’ services are
not related to opposer’s medical-related charitable
fundraising services.15
Osborn Depo. Exh. 41 is a printout of a yellowpages.com
listing for a company called “AmeriCare Medical Supplies”
(presumably one of the companies listed in Osborn Depo. Exh.
40).16 The listing indicates that this company sells
“Hospital Equipment & Supplies, Surgical Appliances &
Supplies, Oxygen.” This directory listing has essentially
no probative value, because we find that the goods this
company sells clearly are dissimilar and unrelated to
opposer’s medical-related charitable fundraising services.17

14 We note that Broadway Chicken was decided in the context of an
ex parte proceeding (with its less stringent standards for
evaluation of evidence), and held that telephone directory
listings are entitled to some probative value as evidence of
third-party use of a mark under the sixth du Pont factor.

15 Based on the chart’s short descriptions of these businesses,
the vast majority of them appear to be in the field of home
health care services, assisted-living facilities, nursing homes
and the like.

16 This company is located in Hebron, CT, and apparently is cited
repeatedly by applicant because it assertedly is located “in
opposer’s own backyard.”

17 Under the heading “General Info” on the listing, there appears
the wording “WHOL MEDICAL/HOSPITAL EQUIPMENT.” It is unclear
from the exhibit, but the “WHOL” likely is an indication that the
company is a wholesaler of medical and hospital equipment, a
business which is even farther removed from opposer’s.
Opposition No. 91187537
42
Osborn Depo. Exh. 42 and 44-47 are printouts of pages
from the Internet websites of five third-party companies in
the health-care field (broadly-defined) which apparently use
AMERICARE in their names.18 We accord these website
exhibits some probative value. See Rocket Trademarks Pty
Ltd. V. Phard S.p.A., 98 USPQ2d 1066 (TTAB 2011). However,
the probative value of these websites is limited insofar as
the record does not show the extent to which the public is
aware of the websites or of the various companies’ actual
use of AMERICARE in their names. See generally Safer, Inc.
v. OMS Investments, Inc., 94 USPQ2d 1031 (TTAB 2010). The
probative value of the evidence also is limited to the
extent that the third parties’ services (such as home health
care services and a nursing school) clearly are dissimilar

18 The five companies are:
- Osborn Depo. Exh. 42: “AMERICARE NURSING SERVICES”
for nursing, therapy and home health care services;
- Osborn Depo. Exh. 44: “AMERICARE” for senior
assisted-living communities;
- Osborn Depo. Exh. 45: “AMERICARE” for assisted-
care facilities;
- Osborn Depo. Exh. 46: “AMERICARE INSTITUTE” for a
nursing school; and
-. Osborn Depo. Exh. 47: “AMERICARE HOME HEALTH
SERVICES” for home health care services.
Osborn Depo. Exh. 43, upon which opposer also relies in this
regard, is a printout of the website of a sixth company, which on
its face indicates (and Ms. Osborn testified that she “confirmed”
by telephone) that the company is “owned and operated” by
“AmeriCare Health and Retirement, Inc.” However, the website
shows that the company actually is doing business as and
identifies itself to the public by the name SILVERGATE RETIREMENT
RESIDENCES, not AMERICARE. This exhibit thus is irrelevant to
the sixth du Pont factor in this case.

Opposition No. 91187537
43
to opposer’s medical-related charitable fundraising
services.19
Also with respect to Osborn Depo. Exh. Nos. 42 and 44-
47, Ms. Osborn testified that she called these companies,
that each of them “answered the phone Americare,” and that
they “confirmed” to her that they are “in business.”20
(Osborn Depo. at 11-19.) We accord this testimony some
probative value to the extent that it shows that each
company apparently answered the telephone in some manner as
“Americare.” See Anthony’s Pizza & Pasta Int’l Inc., supra,
95 USPQ2d 1271, 1277-78. However, her testimony that each
company “confirmed” to her in the telephone call that it is
“in business” is hearsay. See Rocket Trademarks Pty Ltd.,
supra, 98 USPQ2d 1066; Tiffany & Co. v. Classic Motor
Carriages Inc., 10 USPQ 1835, 1839 n.5 (TTAB 1989).
Osborn Depo. Exh. 58 is a printout of “Business Name
Search Information” from CT Coresearch.21 The search notes

19 These probative shortcomings also are present in Shattuck Disc.
Depo. Exh. 13, 14, 17, 18, and 20, relied on by applicant, which
are printouts of the webpages of other companies apparently using
AMERICARE marks for services such as a home health care agency,
assisted-living facilities, a nursing school and a massage
therapy school.

20 Ms. Osborn apparently made a similar call to the Hebron, CT
company identified in Osborn Depo. Exh. 41. (Osborn Depo. at
11.)

21 The report’s “Notes” say it is a list of “business name
citations from the American Business Directory and Dun’s Market
Identifiers databases in preparation of this report.” “The
American Business Directory contains key information on over 10
million businesses in the United States; Dun’s Market Identifiers
Opposition No. 91187537
44
say that the search retrieved “over 400 records” from a
search for “the prefix AMERICARE.”22 We accord some
probative value to this exhibit. Again, however, its
probative value is limited to the extent that it does not
demonstrate the public’s awareness of these companies and to
the extent that the companies’ services are dissimilar to
opposer’s medical-related charitable fundraising services.
Osborn Depo. Exh. 59 is Ms. Osborn’s summary chart
based on Osborn Depo. Exh. 58, entitled “Active AmeriCare
Companies Identified in Business Name Section of CT
Coresearch Report.” The chart lists 25 companies, as to
which Ms. Osborn testified (Osborn Depo. at 22-23):23

database contains information on millions of businesses,
including public, private, and government organizations.”

22 It is unclear how many of the retrieved business names overlap
with the yellowpages.com listings in Osborn Depo. Exh. 40.

23 The chart’s entries are:
BN-1: AMERICARE – hospices
BN-2: AMERICARE – day care centers-adult
BN-3: AMERICARE – business services
BN-5: AMERICARE – residential care homes
BN-6: AMERICARE MEDICAL TRANSPORT – ambulance service (Maryland)
BN-7: AMERICARE AMBULANCE SVC-MNC – ambulance service (Indiana)
BN-8: AMERICARE AMBULANCE SVC – ambulance service (Florida)
BN-9: AMERICARE AMBULANCE ambulance service (Artesia, CA)
BN-10: AMERICARE AMBULANCE – ambulance service (Laguna Hills,
CA)
BN-11: AMERICARE AMBULANCE – ambulance service (Orange, CA)
BN-12: AMERICARE AMBULANCE – ambulance service (San Diego, CA)
BN-13: AMERICARE AMBULANCE – ambulance service (El Monte, CA)
BN-14: AMERICARE AMBULANCE – ambulance service (Torrance, CA)
BN-20: AMERICARE – chiropractor’s office
BN-27: AMERICARE – home health care services
BN-31: AMERICARE DENTAL – skilled nursing care facility
BN-32: AMERICARE HEALTH SCAN, INC. – surgical and medical
instrument manufacturing
BN-35: AMERICARE INC. – health care consulting
Opposition No. 91187537
45

Q. Did you prepare a summary chart of all
active AmeriCare companies based on your – based
on the businesses that you called?
A. Yes.
[Exh. 59 marked.]
Q. ... Is this a summary chart that you
prepared?
A. Yes.
Q. And these are the phone numbers that you
called?
A. Yes.
Q. And each one of these they answered and
confirmed that they are using the name?
A. Yes.
Q. And these companies are active AmeriCare
companies?
A. Yes.

Again, the probative value of Osborn Depo. Exh. 59 is
limited to the extent that it fails to show the extent of
the public’s awareness of any of these third-party AMERICARE
companies, and to the extent that the services performed by
the third parties are dissimilar to opposer’s medical-
related charitable fundraising services.24 We accord some

BN-37: AMERICARE HEALTH SERVICE – home health care services
BN-40: AMERICARE MOBILITY VAN LLC – transportation services
health/allied services
BN-41: AMERICARE HEALTH & RETIREMENT, INC. – medical building
management company
BN-42: AMERICARE NURSING SERVICES INC. – home health care
BN-43: AMERICARE HEALTH CENTERS – chiropractor’s office
BN-45: AMERICARE MEDICAL CENTER – medical doctor’s office
BN-46: AMERICARE CLINIC – podiatrist’s office

24 Also, we note that du Pont factor 6 goes to evidence of similar
marks in use on “similar services.” Although we have not relied
on it for purposes of our determination of the similarity of
opposer’s services and applicant’s ambulance services under the
second du Pont factor (see discussion above), we find it
interesting that applicant’s list of companies asserted to be
using “similar marks on similar services,” for purposes of factor
6, includes ten ambulance companies (again, many of which appear
to be applicant).
Opposition No. 91187537
46
probative value to Ms. Osborn’s testimony that she called
these companies and they answered the telephone in some
manner as AMERICARE, but her testimony that the recipients
of the telephone calls “confirmed” to her that they are
“using the name” and are “active AmeriCare companies” is
hearsay.
We also find that the probative value of Osborn Depo.
Exh. 59 and Ms. Osborn’s accompanying testimony is limited
more fundamentally by the fact that, of the twenty-five
AMERICARE companies listed in the chart and assertedly
called by Ms. Osborn, five (and perhaps six) appear to be
applicant’s own ambulance company locations.25 These
clearly are not probative as evidence of third-party use
under the sixth du Pont factor. The fact that Ms. Osborn
called these numbers (i.e., she called applicant itself) is
peculiar, and it tends to raise questions about the
circumstances of her telephone calls to the other third
party “Americare” companies applicant relies on.
Samuel Depo. Exh. 60 is asserted to be a list of 2,086
AMERICARE domain names from CT Coresearch. (Samuel Depo. at
6-7.) This is a mere list of domain names, with no
indication as to what businesses the domain names are used

25 In the footnote above, see the listings for BN-9, BN-10, BN-11,
BN-12, BN-13, BN-14. The record shows that the number called for
these listings, “888-923-9723,” is one of applicant’s phone
numbers. See applicant’s brochure and webpages at Kramer Depo.
Exh. 85-86, 100-103.
Opposition No. 91187537
47
in connection with (or if they are being used in any
business at all). This exhibit warrants no probative value
under the sixth du Pont factor.
Shattuck Disc. Depo. Exh. 49-56 appear to be websites
of companies marketing oxygen in some manner. These
exhibits are irrelevant and their submission by applicant is
inexplicable.
Opposer’s answer to applicant’s Interrogatory No. 16
(Applicant’s NOR Exh. 3), regarding unidentified third-party
registrations and use of “Americare” marks, is entitled to
no probative value, for the reasons stated by opposer in its
answer to the interrogatory.
Shattuck Disc. Depo. Exh. 8 is a search report
apparently conducted by opposer in 1984. Ms. Shattuck, the
witness to whom it was shown, testified that she was not
aware of it. In any event, this 29-year old search report
is entitled to no probative value in our analysis of the
nature and extent of similar marks in use on similar goods,
that is, marks that are currently or at least recently in
use.
The same goes for Shattuck Disc. Depo. Exh. 23, a
Google® hit list dated 2003, of apparent “Americare”
websites. Ms. Shattuck, the witness to whom it was shown,
was not aware of any of these third parties. Moreover, a
Google® hit list is entitled to very little probative value
Opposition No. 91187537
48
for purposes of the sixth du Pont factor. See In re Max
Capital Group Ltd., 93 USPQ2d 1243 (TTAB 2010).
Shattuck Disc. Depo. Exh. 11-21 are largely the same as
Osborn Depo. Exh. 42-48, discussed above. Ms. Shattuck
testified that she was not aware of these third parties.
Shattuck Disc. Depo. Exh. 32 appears to be one page of
an unidentified Google® hit list of what appear to be
“Americare”-company websites from Southern California. Ms.
Shattuck testified that she was not aware of any of these
third parties. And again, Google® hit lists are entitled to
little probative value under the sixth du Pont factor.
Finally, citing page 107 of Ms. Shattuck’s discovery
deposition, applicant argues repeatedly that “[o]pposer
unequivocally and explicitly acknowledged that there is a
profusion of companies named AmeriCare throughout the
country that are involved in all manner of healthcare
related activities.” We disagree. The page 107 testimony
applicant relies on pertains to Shattuck Disc. Depo. Exh. 32
discussed above, i.e., the Google® hit list of “Americare”
companies in Southern California. In its entirety, the
testimony is as follows:

Q. Do you see the fourth link on here is for
the AmeriCare companies with the web site
americare?
A. I see that.
Q. Have you ever heard of that outfit before?
A. No.
Opposition No. 91187537
49
Q. If you turn to the second page. Because I
did the search, it automatically looked for
Irvine, California, and it showed local business
results for AmeriCare near Irvine, California and
there’s an AmeriCare Health Service, pharmacy,
ambulance, guest home, nurses registry,
respiratory services and hospice. And then a link
for more results near Irvine, California. Those
are just the top seven. Are you generally aware
that there is a profusion of companies named
AmeriCare throughout the country that are involved
in all manner of healthcare related activities?
A. Yes.

When it is viewed in context, it is clear from this
testimony and from Ms. Shattuck’s prior testimony in the
deposition that, when she was shown numerous alleged third-
party uses of “Americare” marks that applicant apparently
had located, she in fact was not “generally aware” of them;
instead, she testified that she was not aware of them.
Clearly, she was not “aware” of them until they were shown
to her during the deposition. Moreover, du Pont factor 6
pertains to actual evidence of third-party uses; the
question of whether or not Ms. Shattuck herself is
“generally aware” of such uses is irrelevant. It is
applicant’s actual evidence of alleged third-party use,
discussed above, that matters in this case.
Considering all of applicant’s evidence pertaining to
“use of similar marks on similar services” under the sixth
du Pont factor (including evidence not specifically
discussed in this opinion, if there be any), we find that it
shows that there have been some such marks adopted by third
Opposition No. 91187537
50
parties. However, as discussed above, the probative value
of applicant’s evidence is limited by the fact that most of
the evidence fails to demonstrate the extent of such third-
party use and the public’s awareness of such use. It also
is limited to the extent that the services in connection
with which these third parties are using their “Americare”
marks are in large part quite dissimilar to opposer’s
medical-related charitable fundraising services.
In summary, we find that applicant’s evidence fails to
show that the number of third party marks is so significant
that the scope of protection to which opposer’s mark is
entitled is substantially lessened. This is especially so
in view of the strength of opposer’s mark, as discussed
above in connection with the fifth du Pont factor. We find
that the sixth du Pont factor weighs in applicant’s favor in
our overall likelihood of confusion analysis, but only to a
limited extent in comparison to the other factors discussed
above which support a conclusion that confusion is likely.
See Han Beauty Inc. v. Alberto-Culver Co., supra, 57 USPQ2d
1557, 1559.

Factors 7 and 8: Actual Confusion
Under the seventh du Pont factor, we consider evidence
pertaining to “the nature and extent of any actual
confusion.” Under the related eighth du Pont factor, we
Opposition No. 91187537
51
consider evidence pertaining to “the length of time during
and conditions under which there has been concurrent use
without evidence of actual confusion.”
Opposer argues that the record contains “voluminous
evidence” showing actual confusion “between AmeriCare and
AmeriCares,” “caused by the fact that the parties’ marks are
substantially identical.” (Opposer’s Main Brief at 23.)
Specifically, opposer contends that because the parties’
marks and names are so similar, potential donors who are
looking for opposer’s website have been misdirected to or
otherwise have found themselves at applicant’s website
instead, thus depriving opposer of donations it otherwise
might have received.
In support of these arguments, opposer has submitted
evidence of a number of instances where it has been referred
to in the press and otherwise by the name “Americare,”
instead of and/or in addition to the name “Americares.”
(Shattuck Test. Depo. at 56-57; Opposer’s NOR Exh. 3 and 4;
Kramer Depo. Exh. 67-81.) Opposer also has presented
evidence showing several instances where third-party
organizations or individuals, when referring to opposer and
its charitable disaster relief activities, have mis-
identified opposer’s Internet URL and/or email address as
“www.americare.org,” which is applicant’s URL, instead of or
Opposition No. 91187537
52
in addition to opposer’s correct URL, which is
www.americares.org. (Shattuck Test. Depo. Exh. 39, 48-52.)
However, we find that these instances where opposer’s
name and/or its Internet URL have been mis-identified as
applicant’s are not persuasive evidence of actual confusion.
The evidence does not prove opposer’s contention that, as a
result of such mis-identifications, anyone in fact has
mistakenly ended up at applicant’s website when they were
searching for opposer’s website. Moreover, even if such
misdirected searches might have occurred, there is nothing
in the record which would show that such instances were the
result of any actual source confusion, rather than due to
the third parties’ mere carelessness or indifference in
referring to opposer’s name and its Internet URL.26

26 For example, one of the alleged instances of actual
confusion upon which opposer especially relies involves MGC
Puzzles, a New York art gallery. (Shattuck Test. Depo. Exh. 39.)
On one occasion in September 2001, MGC Puzzles stated on its
website that it was donating a portion of its profits to opposer
to support opposer’s relief efforts on behalf of the survivors of
the September 11, 2001 terrorist attacks. In that website
advertisement, MGC Puzzles in one place stated that it was
sending its donations to “AmeriCares” at the Internet URL
“americares.org,” opposer’s correct name and URL, but in another
place stated that it was sending its donations to “AmeriCare” at
the Internet URL “americare.org,” which are applicant’s name and
URL. Ms. Shattuck testified that this is an example of
“potential donors who were looking to come to AmeriCares, the
organization that I work for, and were finding themselves at
AmeriCare MedServices.” (Shattuck Test. Depo. at 68.).
However, applicant has made of record a September 26, 2001
email exchange regarding this advertisement between opposer’s
counsel Mr. Kramer and the owner of MGC Puzzles, Mark G.
Cappitella. (Shattuck Disc. Depo. Exh. 30). The subject line of
the email exchange is: “Re: Special Donations.” In the text of
the email, Mr. Kramer writes (in pertinent part): “Hi. I am
confused. Are you sending contributions to the national relief
Opposition No. 91187537
53
We have considered all of opposer’s evidence and
arguments under the seventh du Pont factor (including Ms.
Shattuck’s vague testimony and any other evidence not
discussed in this opinion), but we find that opposer has
failed to prove that any actual confusion has occurred.
However, we also find, under the related eighth du Pont
factor (“the length of time during and conditions under
which there has been concurrent use without evidence of
actual confusion”), that there has not been a significant
opportunity for actual confusion to have occurred.
Applicant’s ambulance services to date have been rendered
primarily and in large part only in a limited geographic
area, i.e., in four counties in Southern California and
occasionally in Arizona and Nevada. The fact that opposer
and applicant apparently did not encounter each other at
Hurricanes Katrina, Ike and Rita, and are not aware of any
actual confusion which resulted from their common presence
at those events, is of limited probative value under the

organization ‘AmeriCares’ [underlining of the “s” in original],
having the web site Americares.org, ... or to the California
ambulance company ‘Americare,’ having the web site Americare.org.
...”. Mr. Cappitella responded: “Nat, Thank you for writing,
and pointing out the web site link error. It is americares.org
(Not the Ambulance company).” Based on this email exchange,
applicant argues (and we agree) that the references to
“AmeriCare” and to “Americare.org” in Shattuck Test. Depo. Exh.
39 obviously were due to mere carelessness on the part of MGC
Puzzles, and that MGC Puzzles clearly was not confused as to
where it was sending its donations, i.e., to opposer.
Further with respect to opposer’s allegations of actual
confusion arising from misdirected emails and Internet searches,
see also Shattuck Disc. Depo. at 74-77 and 81-83.
Opposition No. 91187537
54
eighth du Pont factor, considering the evidence on that
factor as a whole.
In these circumstances, we find that the seventh and
eighth du Pont factors pertaining to actual confusion,
considered together, effectively counterbalance each other
and are essentially neutral in our overall likelihood of
confusion analysis in this case. In any event, we find that
the significance of these two du Pont factors is outweighed
in our overall likelihood of confusion analysis by our
findings under the other du Pont factors as discussed above,
which we find to support a conclusion that a likelihood of
confusion exists in this case.

Likelihood of Confusion: Conclusion
We have considered all of the evidence of record as it
pertains to the relevant du Pont factors (including any
evidence not specifically discussed in this opinion), and we
conclude that a likelihood of confusion exists. For the
reasons discussed above, we find that the parties’ marks are
highly similar and that the parties’ services are
sufficiently related that source confusion is likely to
result from use of these similar marks in connection with
such services. The evidence of record pertaining to the
other du Pont factors, on balance, also leads to the
conclusion that confusion is likely. To the extent that any
Opposition No. 91187537
55
evidence in the record might weigh in applicant’s favor, we
find that it is clearly outweighed by all of the evidence in
the record which supports the ultimate conclusion that a
likelihood of confusion exists.
We have considered all of applicant’s arguments in
opposition to opposer’s likelihood of confusion claim but we
are not persuaded by them, for all of the reasons discussed
above. To the extent that any doubts might exist as to
whether confusion is likely, we resolve them, as we must,
against applicant. See TBC Corp. v. Holsa Inc., 126 F.3d
1470, 44 USPQ2d 1315 (Fed. Cir. 1997); In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); Ava
Enterprises Inc. v. Audio Boss USA Inc., 77 USPQ2d 1783
(TTAB 2006).

CONCLUSION
For all of the reasons discussed above, we find that
opposer has established its standing to oppose and its
Section 2(d) ground of opposition, and thus its entitlement
to prevail in this proceeding.

Decision: The opposition is sustained.