BTL Health, Inc.

Trademark Trial and Appeal BoardNov 5, 2015

No. 85862659 (T.T.A.B. Nov. 5, 2015)

This Opinion is not a Precedent of the TTAB Mailed: November 5, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re BTL Health, Inc. _____ Serial No. 85862659 _____ Matthew H. Swyers for BTL Health, Inc. Jason F. Turner, Trademark Examining Attorney, Law Office 108, Andrew Lawrence, Managing Attorney. _____ Before Cataldo, Wolfson and Lynch, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: BTL Health, Inc. (“Applicant”) seeks registration on the Principal Register of the mark METROHEALTH STATION (in standard characters, “STATION” disclaimed) for “health care; medical clinics” in International Class 44.1 The Trademark Examining Attorney has refused registration of Applicant’s mark under Trademark Act Section 2(d); 15 U.S.C. § 1052(d), based upon the following registrations: 1 Application Serial No. 85862659 was filed on February 28, 2013, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act. Serial No. 85862659 - 2 - Registration No. 2768494, issued to Metropolitan Health Corp. for the mark METRO HEALTH (typed or standard characters,2 “HEALTH” disclaimed) for “provision of managed care, home health, physician, hospital and related health care services” in Class 42;3 and Registration No. 4081584, issued to The MetroHealth System for the mark METROHEALTHY (standard characters) for, inter alia, “hospital services and medical information services, namely, providing medical care for patients; providing general health wellness and medical information to patients and the public” in Class 44.4 After the Trademark Examining Attorney made the refusal final, Applicant appealed to this Board. We affirm the refusal to register. I. Applicable Law Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See 2 Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. §2.52, was amended to replace the term “typed” drawing with “standard character” drawing. A mark depicted as a typed drawing is the legal equivalent of a standard character mark. 3 Registered on the Principal Register on September 30, 2003. Section 8 affidavit accepted; Section 15 affidavit acknowledged. First Renewal. After the date of this registration, health care services in Class 42 were reclassified in Class 44 due to the restructuring of Class 42 that was implemented in the 8th edition of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. See U.S. Acceptable Identification of Goods and Services Manual, note to entry for “health care;” Trademark Manual of Examining Procedure § 1401.09 (Oct. 2015) (regarding restructuring of Class 42). 4 Registered on the Principal Register on January 10, 2012. The registration also recites goods in Class 16 and services in Classes 35, 41 and 42. Serial No. 85862659 - 3 - also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). We discuss the du Pont factors for which Applicant and the Examining Attorney have presented evidence and arguments. Registration No. 2768494 For purposes of the du Pont factors that are relevant to this appeal we will consider Applicant’s involved mark and the mark that is the subject of cited Registration No. 2768494. If likelihood of confusion is found as to the mark and services in this registration, it is unnecessary to consider the other cited registration because the mark in Registration No. 2768494 is more similar to the mark in the involved application and the services recited therein are at least comparably, if not more, closely related to those in the involved application.5 Conversely, if likelihood of confusion is not found as to the mark and services in this registration, we would not find likelihood of confusion as to the mark and services in the other cited registration. Relationship of the Services We turn to the du Pont factor involving the similarity or dissimilarity of Applicant’s “health care” and “medical clinics” and Registrant’s “provision of managed care, home health, physician, hospital and related health care services.” It is settled that in making our determination, we must look to the services as identified in the application vis-à-vis those recited in the cited registration. See 5 We observe that the two cited registrations are owned by different entities. However, we are not privy to the facts surrounding the registration of these marks, including any agreements that may exist between the owners thereof. Serial No. 85862659 - 4 - Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). It is not necessary that the respective services be competitive, or even that they move in the same channels of trade to support a holding of likelihood of confusion. It is sufficient that the respective services are related in some manner, or that the conditions and activities surrounding the marketing of the services are such that they would or could be encountered by the same persons under circumstances that could give rise to the mistaken belief that they originate from the same producer. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991). In its brief, Applicant makes the following acknowledgement: “Applicant must concede the similarity of the goods or services as recited in the Applicant’s applied- for trademark as well as the registered trademark.”6 We observe that the services at issue are related on their face inasmuch as both include various types of health care. As identified, Applicant’s broadly worded health care services include no limitations as to their specific nature or type. We therefore must presume that Applicant’s health care services encompass Registrant’s more narrowly identified home health, physician, hospital and related health care services. Put another way, Registrant’s services appear to be a subset of Applicant’s health care. See, e.g., In re 6 7 TTABVUE 18. Citations to the briefs refer to TTABVUE, the Board’s online docket system, by page number. Citations to the examination record refer to the Trademark Office’s online Trademark Status and Document Retrieval system (TSDR), by page number. Serial No. 85862659 - 5 - Thor Tech, Inc., 90 USPQ2d 1634 (TTAB 2009) (finding “recreational vehicles, namely, travel trailers and fifth wheel trailers” to be encompassed by and legally identical to “trailers”); In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992) (finding “computer software for data integration and transfer” to be encompassed by and legally identical to “computer programs recorded on magnetic disks”). As a result, we find that Applicant’s health care includes – and thus is legally identical to – Registrant’s home health, physician, hospital and related health care services. In addition, the Examining Attorney introduced into the record with his February 3, 2015 Office Action7 evidence from commercial and informational Internet websites suggesting that the same entities provide both Applicant’s services as well as Registrant’s services under the same marks. Examples include fbch.capmed.mil; virginiamason.org; seattlechildrens.org; cincinnatichildrens.org; and medinahospital.net. The Examining Attorney also made of record with his January 1, 2014 Office Action8 and July 22, 2014 Office Action9 copies of third-party, use-based registrations, of which 20 recite services identified both in the involved application and cited registration. The following examples are illustrative: Registration No. 3910930 for “hospital services; medical services; visiting nurse services; health care services;” Registration No. 4426352 for services including “hospital services; health care services;” 7 Id. at 12-33. 8 Id. at 27-63. 9 Id. at 14-96. Serial No. 85862659 - 6 - Registration No. 4446073 for “health care services and hospital services;” Registration No. 1592489 for “hospital services and medical clinic services;” and Registration No. 4391838 for services including “inpatient and outpatient hospital services; health care services; medical clinic services.” These registrations suggest that third parties provide certain of Applicant’s services and Registrant’s services under a single mark. See In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1217-18 (TTAB 2001) (“The registrations show that entities have registered their marks for both television and radio broadcasting services. Although these registrations are not evidence that the marks shown therein are in use or that the public is familiar with them, they nevertheless have probative value to the extent that they serve to suggest that the services listed therein, including television and radio broadcasting, are of a kind which may emanate from a single source.). See also, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010); In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). Furthermore, it is not necessary for the Examining Attorney to prove likelihood of confusion with respect to each of the services identified in Applicant’s single-class application; if there is likelihood of confusion with respect to any of Applicant’s identified services, the refusal of registration must be affirmed. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Serial No. 85862659 - 7 - Channels of Trade and Classes of Purchasers When the services are legally identical, we must assume that the channels of trade and purchasers are also the same. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’ goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade.”); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers.”). As discussed above, Applicant’s health care encompasses and thus is legally identical to Registrant’s home health, physician, hospital and related health care services. We must therefore assume these services are available in the same channels of trade to the same consumers. Applicant argues that any relatedness of the services is severely limited by the stated goals of the various organizations, as demonstrated by the distinct channels of trade used by the Applicant as compare [sic] with the Registrants. As full service regional health care facilities, both cited Registrants have broad institutional roles in their communities and are responsible for providing the full spectrum of medical services to their respective populations. The Applicant, in contrast, is primarily focused on providing basic medical care to individuals who are living in medically underserved areas such as high-density urban areas and within settings which are traditionally inaccessible to standard health care delivery systems, such as the foster care system, prisons, and facilities which provide housing to individuals with disabilities.10 10 Id. at 18. Serial No. 85862659 - 8 - However, even if Applicant could establish that it and Registrant were currently operating in distinct geographic areas, this would not support a conclusion that there was no likelihood of confusion when Applicant and Registrant have a geographically unrestricted application and registration. In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214 (TTAB 2001) (“Given that registrant’s registrations encompass nationwide rights, and that applicant is seeking a geographically unrestricted registration, applicant’s argument is unavailing”); In re Integrity Mutual Insurance Co., 216 USPQ 895, 896 (TTAB 1982) (“Inasmuch as applicant is seeking a geographically unrestricted registration, the Board is constrained to evaluate similarities in terms of potentially nationwide markets”). In addition, the trade channel restrictions asserted by Applicant are not present either in Applicant’s or Registrant’s recitation of services. Nor can we consider extrinsic evidence of such limitations in this proceeding. See In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) (extrinsic evidence and argument suggesting trade-channel restrictions not specified in application rejected); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Therefore, the services, channels of trade, and purchasers must be considered to be legally identical in part.11 Similarities and Dissimilarities of the Marks We turn then to a comparison of Applicant’s METROHEALTH STATION mark and Registrant’s METRO HEALTH mark for similarities and dissimilarities in 11 We observe that even if the services were not legally identical, as discussed above the Examining Attorney has introduced evidence sufficient to support a finding that the services are closely related. Serial No. 85862659 - 9 - appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)). The similarity or dissimilarity of the marks is determined based on the marks in their entireties, and the analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion”). In addition, we observe that while we have placed the two marks next to one another for comparison purposes, consumers may not necessarily encounter the marks in such proximity and must rely upon their recollections thereof. In re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988). We begin our analysis by observing that the term METROHEALTH in Applicant’s METROHEALTH STATION mark is the legal equivalent of the term METRO HEALTH that comprises Registrant’s mark. In re L.C. Licensing Inc., 49 USPQ2d 1379, 1381 (TTAB 1998) (LIZ SPORT and LIZSPORT engender the same commercial impression); In re Strathmore Products, Inc., 136 USPQ 81, 82 (TTAB 1962) (the contraction of a term does not alter the essential identity of the character and meaning between the full word and its contraction). Serial No. 85862659 - 10 - The only meaningful difference between the marks is Applicant’s addition of the disclaimed word STATION to Registrant’s mark. However, the addition of a term to a registered mark generally does not obviate the similarity between the compared marks, nor does it overcome a likelihood of confusion under Section 2(d). See In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar). Furthermore, disclaimed matter is often “less significant in creating the mark’s commercial impression.” In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001). “Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.’” Cunningham v. Laser Golf Corp., 55 USPQ2d 1842, 1846, quoting In re National Data Corp., 224 USPQ at 752. However, while a disclaimed term … may be given little weight … it may not be ignored.” M2 Software Inc. v. M2 Communications Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1948-49 (Fed. Cir. 2006). The Examining Attorney has pointed out that a “station” is defined as “a place equipped for some particular kind of work, service, research or the like.”12 The Examining Attorney further has demonstrated that health care, especially emergency health care, is provided at an aid “station.”13 As a result, we find the term METROHEALTH is the dominant portion of Applicant’s mark and contributes significantly more to the overall commercial impression thereof. See In 12 June 18, 2013 Office Action at 4, 6 (definition taken from dictionary.com). 13 January 1, 2014 Office Action at 9-19. Serial No. 85862659 - 11 - re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 224 USPQ at 751. Applicant argues that the marks are dissimilar in appearance and sound as a result of the presence of the term STATION in its mark. We agree that the addition of STATION to Applicant’s mark creates an aural and visual distinction from Registrant’s mark. However, the greater significance of METROHEALTH in Applicant’s mark is reinforced by its location as the first word in the mark. Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897) TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed in the mind of a purchaser and remembered”). See also Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers must first notice the identical lead word); Palm Bay, 73 USPQ2d at 1692 (“The presence of this strong distinctive term as the first word in both parties’ marks renders the marks similar, especially in light of the largely laudatory (and hence non-source identifying) significance of ROYALE.”). Further, consumers are often known to use shortened forms of names, and it is probable that Applicant and its services will be referred to as “METROHEALTH.” Cf. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978) (Rich, J., concurring: “the users of language have a universal habit of shortening full names – from haste or laziness or just economy of words.”). Applicant also urges us to consider the manner in which the marks are used in commerce, “by virtue of the fact that the Registrant’s mark contains a distinctive Serial No. 85862659 - 12 - design element at to [sic] the left of the literal elements.”14 Such arguments are unavailing because it is well established that, in contrast to an infringement action where the court examines the visual appearance of the marks in the context of actual use, in proceedings before the Board, actual use is not relevant. Jim Beam Brands Co. v. Beamish & Crawford, Ltd., 937 F.2d 729, 19 USPQ2d 1352 (2d Cir. 1991). See also Cunningham, 55 USPQ2d at 1847 (“Registrations with typed drawings are not limited to any particular rendition of the mark and, in particular, are not limited to the mark as it is used in commerce.”). Applicant’s arguments regarding matter, such as designs appearing in connection with its mark or that of Registrant, which are not part of the mark Applicant seeks to register or the mark in the cited registration, are not relevant to the analysis. The right to register a mark must be determined on the basis of Applicant’s mark “exactly as shown in the application” regardless of the manner of actual use. Jim Beam, 19 USPQ2d at 1356 (distinguishing infringement proceedings from Board proceedings). See also Bellbrook Dairies, Inc. v. Hawthorn-Mellody Farms Dairy, Inc., 117 USPQ 213, 214 (CCPA 1958); Blue Cross and Blue Shield Association v. Harvard Community Health Plan Inc., 17 USPQ2d 1075, 1077 (TTAB 1990). Simply put, for purposes of our determination of the similarity or dissimilarity of the marks, we may not consider designs or other matter that are not part of the marks as applied-for and registered. 14 7 TTABVUE 12. Serial No. 85862659 - 13 - With regard to connotation and commercial impression, Applicant argues that “METROHEALTH STATION creates a commercial impression of offering health care services to individuals who ‘Go Metro’, [a] regionally well-known reference to the system of public transportation in Los Angeles, California, which is used by the most [sic] of the individuals served by the Applicant”15 whereas “METRO HEALTH creates a commercial impression of being a dedicated local hospital in service to the community geographically limited to the area of Michigan immediately surrounding the city of Wyoming, which is near Grand Rapids.”16 However, the divergent connotations of the METROHEALTH STATION and METRO HEALTH marks urged by Applicant are not apparent in the marks themselves, or the services identified thereby. Furthermore, the only evidence of such connotations is the affidavit of Applicant’s Chief Executive Officer and a printout asserted by Applicant to be taken from its Internet website. This evidence falls far short of demonstrating that consumers will recognize the term “METRO” as referring to the City of Los Angeles or its public transportation system or to the other geographic connotations suggested by Applicant. We observe in addition that to the extent consumers may view the term “METRO” as having such a meaning, they also would attribute that meaning to Registrant’s mark. Applicant argues, in addition, that the term “HEALTH” merely describes the services enumerated in its application and the cited registration. We agree. Applicant further argues that the term “METRO” “can be short for metropolitan 15 Id. 16 Id. at 12-13. Serial No. 85862659 - 14 - and is thus used as a shorthand term for many large cities and the surrounding suburbs, but can also specifically refer to the public transportation system of Los Angeles, California.”17 As discussed above, however, Applicant has not introduced sufficient evidence to support its contention that consumers will recognize “METRO” as referring solely to the Los Angeles public transportation system. Based upon the scant evidence of record, we find that METROHEALTH or METRO HEALTH suggests health care services provided in a metropolitan area. In further support of its position that the term “METRO” is weak as applied to the recited services, Applicant has introduced into the record copies of the following 6 use-based third-party registrations, all issued on the Principal Register to different entities: Registration No. 3672572 for the mark shown below (MEDICAL disclaimed) for “medical and health care services;” Registration No. 2014259 for the mark METROPLUS HEALTH PLAN (typed or standard characters, HEALTH PLAN disclaimed) for “ medical and health care services and health care in the nature of health maintenance organizations;” Registration No. 3016229 for the mark METRO (standard characters) for “medical services, namely, medical diagnostic and medical treatment services, infusion services, nursing care, ambulatory care, wellness programs, smoking cessation programs and providing health information;” Registration No. 3097887 for the mark METRON (standard characters) for “home health care services, subacute physical 17 Id. at 17-18. Serial No. 85862659 - 15 - therapy and rehabilitation services, hospice services, nursing home services, providing on-site nursing care, and rental of medical equipment and supplies;” Registration No. 3710989 for the mark METROSOUTH MEDICAL CENTER (standard characters, MEDICAL CENTER disclaimed) f o r “medical, health care, and hospital services;” and Registration No. 4308179 for the mark METROMEDISPA AGE MANAGEMENT & REJUVENATION (standard characters) for “medical clinic providing weight loss solutions, services and programs, nutrition counseling, hormone therapy, including, bioidentical hormone replacement, anti aging therapy, and natural hormone therapy, medical aesthetic procedures, including, laser hair removal, laser peels, botulinum toxin treatments, microdermabrasion, liposuction, vein treatments, vein therapy, cellulite treatments, body contouring treatments, injectable filler treatments, facials, and skin care.”18 We note that the “existence of [third party] registrations is not evidence of what happens in the market place or that customers are familiar with them.” AMF Inc. v. American Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). Nevertheless, in determining the degree of weakness, if any, in the shared term “METRO,” we must “adequately account for the apparent force of [third-party use] evidence,” regardless of whether “specifics” pertaining to the extent and impact of such use have been proven. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-5 (Fed. Cir. 2015). “[E]xtensive evidence of third- party use and registrations is ‘powerful on its face,’ even where the specific extent and impact of the usage has not been established.” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015), citing to Juice Generation. In this case, we 18 July 1, 2014 request for reconsideration at 28-33. Serial No. 85862659 - 16 - have no evidence of third-party use of “METRO-” formative marks in the field of health care; however, each of the registrations introduced into the record by Applicant recites various health care and related services. We consider each of the third-party registrations in turn. Registration No. 3672572 – the mark consists of the wording ALLIED METRO MEDICAL and a stylized design. The term “ALLIED” appears to be, at worst, suggestive of the recited services and adds a connotation to the mark that is absent in either Applicant’s mark or Registrant’s mark. Thus, the mark in Registration No. 3672572 has a connotation separate and apart from those engendered by Applicant’s mark or the mark in the cited registration. Registration No. 2014259 – the mark METROPLUS HEALTH PLAN contains the term “PLUS” which suggests something additional and the descriptive term “PLAN” both of which are absent from the marks at issue herein. Thus, the mark in Registration No. 2014259 connotes a health plan for a region greater than a metropolitan area or providing more than a standard health plan for a metropolitan area. This connotation is somewhat different from those engendered by Applicant’s mark or the mark in the cited registration. Registration No. 3016229 – the mark METRO arguably creates a connotation closest to those engendered by the marks at issue herein. As discussed above, the tem “METRO” suggests “metropolitan” and METRO connotes health care provided to a metropolitan area and METRO HEALTH or METROHEALTH STATION present similar connotations. However, due to Serial No. 85862659 - 17 - the presence of the shared term “HEALTH” in the marks at issue, the mark METRO is rather less similar in appearance and sound and, overall, is less similar in overall commercial impression than the marks in the involved application or cited registration are to each other. Registration No. 3097887 – the mark METRON appears to be a coined term with no apparent meaning. While it may be intended to convey a meaning similar to that of “METRO” no such meaning is apparent on this record. Thus, the mark METRON differs from the marks in both the involved application and cited registration. Registration No. 3710989 – the mark METROSOUTH MEDICAL CENTER consists of the term “METROSOUTH” which connotes a Southern metropolitan area and the generic term “MEDICAL CENTER.” The mark thus connotes a medical center located in a Southern metropolitan area or the Southern region of a metropolitan area. This connotation is somewhat different from those engendered by Applicant’s mark or the mark in the cited registration. Registration No. 4308179 - the mark METROMEDISPA AGE MANAGEMENT & REJUVENATION contains the term “METROMEDISPA” which appears to be a combination of “METRO” and the descriptive term “MEDISPA.” To the extent such term has a similar connotation to “METRO,” the mark as a whole suggests a spa devoted to age management and rejuvenation which creates a different connotation from those engendered by Serial No. 85862659 - 18 - Applicant’s mark or the mark in the cited registration, in addition to differences in appearance and sound. The totality of the evidence presented by Applicant fails to show that the term “METRO” is weak and diluted as applied to various health care services. Of the third-party registrations of record, only two contain the term “METRO” while three more contain derivations thereof (METROPLUS, METROSOUTH and METROMEDISPA) and one includes a coined term that is only similar to “METRO” (METRON). This hardly qualifies as the extensive third-party use and registration discussed in Jack Wolfskin or Juice Generation. These 6 third-party registrations may be used to demonstrate that “METRO” is suggestive or descriptive; they cannot be used to justify the registration of another confusingly similar mark. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987). See also Plus Products v. Star- Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983) (“[T]hird party registrations relied on by applicant cannot justify the registration of another confusingly similar mark”). Therefore, while we can agree that the cited mark may be suggestive of the services, the evidence does not show that it is so highly suggestive as to be entitled to only a narrow scope of protection. Also, it has often been stated that each case must stand on its own record and, in any event, the Board is not bound by the actions of prior examining attorneys. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to [applicant’s] Serial No. 85862659 - 19 - application, the PTO’s allowance of such prior registrations does not bind the board or this court.”). Viewing the marks as a whole, we find that METRO HEALTH and METROHEALTH STATION share an identical term as the entirety of Registrant’s mark and the most distinctive portion of Applicant’s mark. This common identical term in both marks results in close similarities in sound, appearance, meaning, and commercial impression. The presence of the additional term “STATION” is not likely to distinguish the marks inasmuch as it would merely indicate that Applicant offers its health care and medical clinic services as a medical station. See, e.g., Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (“Given the dominance of the word ‘Packard’ in PACKARD TECHNOLOGIES and HP’s heavy involvement in the technology field, this court agrees with the Board that the similarities in the marks [PACKARD TECHNOLOGIES and HEWLETT PACKARD] outweigh the differences. Substantial evidence supports the Board’s finding that the marks are similar in their entireties”). Viewed as a whole, Applicant’s mark is more similar to than dissimilar from the mark in the cited registration in appearance, sound and, in particular, connotation. As a result, we find that the marks convey commercial impressions that are highly similar. Serial No. 85862659 - 20 - Sophistication of Purchasers Applicant also argues that “purchasers exercise sufficient care in the purchase of the respective goods or services that clearly would minimize any potential for a likelihood of confusion as between the respective trademarks.”19 However, the selection of medical care is often made under emergency circumstances, and many patients lack the expertise to make a reasoned and careful choice of medical and physician services. There being no evidence on this point in the record, we treat this factor as neutral. Absence of Actual Confusion Finally, Applicant argues that there is no evidence of any actual confusion. Specifically, Applicant argues: The Applicant’s services are intended for residents of medically underserved areas of Los Angeles, California. The first cited Registrant’s services are intended for residents of Cleveland, Ohio. The Second cited Registrant’s services are intended for residents of Wyoming, Michigan. As these three areas are geographically wide spread, and in consideration of the need for individuals making use of any of the Applicant’s or Registrant’s services to do so in person, it is respectfully asserted that there is no real likelihood of consumer confusion in this case.20 We observe, however, that the involved application is based upon Applicant’s assertion of its bona fide intent to use the mark in commerce and there is insufficient evidence of record to support a finding that any meaningful opportunities for actual confusion may occur. Second, and as discussed above, Applicant may not attempt to impose geographic limitations on the scope of a cited 19 7 TTABVUE 19. 20 7 TTABVUE 20. Serial No. 85862659 - 21 - registration that is registered without any such limitations. In addition, the Federal Circuit has addressed the question of the weight to be given to an assertion of no actual confusion by an applicant in an ex parte proceeding: With regard to the seventh DuPont factor, we agree with the Board that Majestic’s uncorroborated statements of no known instances of actual confusion are of little evidentiary value. See In re Bissett- Berman Corp., 476 F.2d 640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating that self-serving testimony of appellant’s corporate president’s unawareness of instances of actual confusion was not conclusive that actual confusion did not exist or that there was no likelihood of confusion). A showing of actual confusion would of course be highly probative, if not conclusive, of a high likelihood of confusion. The opposite is not true, however. The lack of evidence of actual confusion carries little weight, [citation omitted], especially in an ex parte context. Majestic Distilling, 65 USPQ2d at 1205. Accordingly, while examples of actual confusion may point toward a finding of a likelihood of confusion, an absence of such evidence is not compelling in support of a finding of no likelihood of confusion. Thus, we cannot conclude from the lack of instances of actual confusion that confusion is not likely to occur. Conclusion We have considered all of the du Pont factors for which Applicant and the Examining Attorney have introduced evidence and arguments. The rest we treat as neutral. After considering all of the evidence of record, including any evidence not specifically discussed herein, and arguments pertaining to the du Pont likelihood of confusion factors, we find the marks are similar, the services are legally identical as are their channels of trade and classes of consumers. In view thereof, we find that Applicant’s mark, if used in association with the services identified in the Serial No. 85862659 - 22 - application, is likely to cause confusion with the registered mark used in connection with the services recited in the registration. Decision: The refusal to register Applicant’s mark is affirmed.