EOSHealth LLCDownload PDFTrademark Trial and Appeal BoardFeb 10, 2014No. 85486668 (T.T.A.B. Feb. 10, 2014) Copy Citation Mailed: February 10, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re EOSHealth LLC ________ Serial No. 85486668 _______ Eric P. Mirabel, attorney at law, for EOSHealth LLC. Steven M. Perez, Trademark Examining Attorney, Law Office 101 (Ronald R. Sussman, Managing Attorney). _______ Before Mermelstein, Lykos, and Gorowitz, Administrative Trademark Judges. Opinion by Lykos, Administrative Trademark Judge: On December 4, 2011, EOSHealth LLC (“applicant”) filed an application to register the mark TEST! DON’T GUESS in standard character format for, as amended, “monitoring and recording of self-medical testing for diagnostic or treatment purposes, namely, monitoring and recording the self-testing of blood glucose levels for others to determine whether food should be consumed or insulin This Opinion is Not a Precedent of the TTAB Serial No. 85486668 2 administered as part of a disease management program” in International Class 44.1 Applicant has appealed the Trademark Examining Attorney’s final refusal to register applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark so resembles the registered mark DON’T GUESS - TEST also in standard character format for “medical testing; metabolic testing for nutraceutical needs; food nutrition consultation; medical and pharmaceutical consultation; medical consultations” in International Class 44,2 that when used on or in connection with applicant’s identified services, it is likely to cause confusion or mistake or to deceive. For the reasons explained below, we affirm the refusal to register. We base our determination under Section 2(d) on an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 1 Application Serial No. 85486668, was originally filed pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). Following the examining attorney’s refusal under Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051-1053, 1127, that the applied-for mark as used on the specimen of record is merely informational matter and fails to function as a service mark, applicant amended the filing basis to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). 2 Registration No. 3417905, registered on April 29, 2008, alleging April 1, 2007 as the date of first use anywhere and in commerce. Serial No. 85486668 3 F.2d 1098, 192 USPQ 24 (CCPA 1976). These factors and the other relevant du Pont factors are discussed below. First we consider the du Pont likelihood of confusion factor regarding the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed Cir. 2005). “The proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. In re Jack B. Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Applicant contends that the marks are “dissimilar in appearance, sound, and commercial impression” because “[t]he first word in [a]pplicant’s mark is the last word in [r]egistrant’s mark.” Applicant’s Brief, p. 7. As applicant asserts, the reversal of the order of the words in the marks engenders “a very different commercial impression as a consumer reading labels has their attention drawn to the first word….” Id. Applicant also points to differences in punctuation, namely that the word TEST in registrant’s mark is preceded by a hyphen, whereas an exclamation point follows that same word in applicant’s mark. Serial No. 85486668 4 We find applicant’s arguments unpersuasive. Both applicant’s and registrant’s marks consist of slogans comprising the word “test” offset by the phrase “don’t guess,” and as such sound and appear alike. Applicant’s applied-for mark “TEST! DON’T GUESS” is merely a transposition of registrant’s mark "DON'T GUESS – TEST.” The Board has often found confusion likely between two marks consisting of reverse combinations of the same elements if they convey the same meaning or create substantially similar commercial impressions. See, e.g., In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (holding THE WINE SOCIETY OF AMERICA and design, for “wine club membership services including the supplying of printed materials, sale of wines to members, conducting wine tasting sessions and recommending specific restaurants offering wines sold by applicant,” likely to be confused with AMERICAN WINE SOCIETY 1967 and design, for a newsletter, bulletin and journal of interest to members of the registrant); In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1884 (TTAB 1988) (holding RUST BUSTER, with "RUST" disclaimed, for a rust-penetrating spray lubricant likely to be confused with BUST RUST for a penetrating oil). In this instance, both applicant’s and registrant’s marks project the same significance to consumers – that of urging consumers/patients to utilize medical testing in order to manage a chronic disease, rather than relying on “conjecture, chance or intuition.”3 See Fed. R. Evid. 201(c)(1) 3 The Board hereby takes judicial notice of the word “guess” obtained from the online version of the Merriam Webster dictionary, accessed at www.merriamwebster.com. It is well established that the Board may take judicial notice of online dictionary definitions where the resource is also available in print form. In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002). Serial No. 85486668 5 (the Board “may take judicial notice on its own”) and Trademark Rule 2.122(a). In particular, we note the same grammatical usage and meaning of the word “test” in both marks as a verb in the imperative form. See id. (judicial notice of the definition of “test” as “defined as “to examine a part of the body or substance taken from the body.”). This particular definition of “test” has the same meaning when applied to both applicant’s and registrant’s medical testing services. In addition, as a general proposition, differences in punctuation fail to obviate the similarities in sounds, meaning and commercial impression of the involved mark. Cf. In re Litehouse, Inc., 82 USPQ2d 1471, 1474 (TTAB 2007) (the presence of the exclamation points in the mark CAESAR!CAESAR! fails to negate the mere descriptiveness of the mark as a whole as applied to salad dressings.). Here the exclamation point in applicant’s mark following the word “test” merely reflects the imperative of “testing” as opposed to “guessing” as part of an effective “disease management program.” The hyphen in registrant’s mark preceding the work “test” does not alter the meaning of the literal terms; rather it too emphasizes the need for the patient/consumer to undergo actual medical testing in lieu of relying on conjecture. We therefore find that this first du Pont factor favors a likelihood of confusion. The next step in our analysis is a comparison of the services identified in applicant’s application vis-à-vis the services identified in the cited registrations, the similarity or dissimilarity of established likely to continue trade channels, and conditions of purchase (the second, third, and fourth du Pont factors). Applicant Serial No. 85486668 6 contends that while its services are limited to blood glucose testing for diabetics with a portable glucometer, both the registrant’s web site and application show that registrant’s services have nothing to do with glucose testing. Applicant further argues that registrant’s services are “non-FDA approved tests” marketed to “a gullible segment of the public.” Applicant’s Brief, p. 8. For this reason, applicant maintains that both the prospective consumers and trade channels of the involved services are different,” with applicant’s customers consisting of sophisticated purchasers such as health care plans, physicians, employers and individuals in contrast to registrant’s unsophisticated and “misinformed” consumers. Applicant’s arguments are unconvincing. Applicant not only improperly relies on extrinsic evidence to distinguish the registrant’s services, but also misreads the scope of registrant’s recitation of services. As we have often stated, the question of likelihood of confusion is determined based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use. See, e.g., Coach Servs., Inc. 101 USPQ2d at 1722; Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Under this framework of analysis, the fact that applicant’s services are restricted to a very narrow type does not obviate the refusal in this case. This is because the medical and metabolic testing, as well as the nutritional, medical and pharmaceutical consultation services in registrant’s recitation are unrestricted and therefore could be directed toward the medical and nutritional treatment of Serial No. 85486668 7 diabetics, the monitoring and testing of blood glucose levels, and administration of insulin. In addition, it is well established that the respective services do not have to be identical or even competitive in order to determine that there is a likelihood of confusion; rather, it is sufficient that the respective services are related in some manner, or the conditions surrounding their marketing must be such that the services will be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that they originate from the same source. Coach Servs., Inc. 101 USPQ2d at 1722, quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007); On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984). The record reflects that applicant’s and registrant’s are in fact closely related, complementary in nature, and are commonly offered by the same entities and encountered at the same time by the same prospective purchasers. The examining attorney provided several examples of health care providers which offer both applicant’s and registrant’s services: -The website of “Tri-County Endocrinology” describing a menu of medical services for diabetes patients including medical consultation, on-site laboratory testing and continuous blood glucose monitoring system services. (www.tcendocrinology.com); -The website of “Queens Diabetes & Endocrinology, P.C.”, describing patient services including medical counseling, continuous glucose monitoring services and medical testing services. (www.Queensdiabendo.org); -The website of the “Center for Diabetes and Endocrinology” describing Serial No. 85486668 8 medical services including endocrinology consultation, blood glucose analysis, diabetes education, and continuous glucose monitoring services. (www.portsmouthendocrinology.com); -The website of the “Northeast Georgia Diagnostic Clinic” describing patient services including continuous glucose monitoring services, pre-diabetes medical counseling and blood glucose testing. (www.ngdc.com); -The website of “Advance Diabetes Care, LLC describing medical services including glucose monitoring, laboratory testing, remote care monitoring, and the development of patient treatment plans. (www.adc4u.com); As aptly put by the examining attorney “… medical consultation is an integral aspect of diabetes management programs. Similarly, there is no reason to conclude that registrant’s ‘metabolic testing for nutraceutical needs’ and ‘food nutrition consultation” could not address the specialized dietary needs of diabetes patients.” Examining Attorney Brief, unnumbered p. 12. In view of the foregoing, the second du Pont factor also favors a finding of likelihood of confusion. With regard to the trade channels, because the recitation of services in both the involved application and registration are unrestricted as to trade channels, we must presume that applicant’s and registrant’s services travel in all ordinary trade and distribution channels. Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983). As reflected in the record, entities offering both applicant’s and registrant’s identified services sell the services via health care providers. As such, both applicant’s and registrant’s services will be encountered by the same prospective consumers. Hence, the third du Pont factor weighs in favor of finding a likelihood of confusion. Serial No. 85486668 9 As to the level of sophistication of consumers, applicant relies heavily on the assumption that consumers of registrant’s services are relatively unsophisticated vis-a-vis those of applicant. However, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. See, e.g., Imagineering Inc. v. Van Klassens Inc., 53 F.3d 1260, 1265, 34 USPQ2d 1526, 1530 (Fed. Cir. 1995); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). This fourth du Pont factor also favors finding a likelihood of confusion. To the extent that there are any other relevant du Pont factors, we treat them as neutral. Lastly, we note applicant’s argument that consumer confusion is unlikely because a review of registrant’s web site www.nbihealth.com shows no use of the registered mark. Such arguments, however, constitute an improper collateral attack against the registration and cannot be considered in an ex parte proceeding. See In re Dixie Rests., Inc., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Fiesta Palms, LLC, 85 USPQ2d 1360, 1363 (TTAB 2007). After considering all of the evidence of record and argument pertaining to the du Pont likelihood of confusion factors, we conclude that there is a likelihood of confusion between applicant’s mark and the registered mark when used in connection with their identified services. DECISION: The refusal to register under Section 2(d) is affirmed. Copy with citationCopy as parenthetical citation