EOSHealth LLC

Trademark Trial and Appeal Board

Feb 10, 2014

No. 85486668 (T.T.A.B. Feb. 10, 2014)

Mailed: February 10, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re EOSHealth LLC
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Serial No. 85486668
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Eric P. Mirabel, attorney at law, for EOSHealth LLC.
Steven M. Perez, Trademark Examining Attorney, Law Office 101 (Ronald R.
Sussman, Managing Attorney).
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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
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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
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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
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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).
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(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
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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
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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
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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
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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.