Phase Forward Inc.v.Mary Noel Adams

Trademark Trial and Appeal Board

Aug 23, 2005

No. 91156778 (T.T.A.B. Aug. 23, 2005)

Mailed:
August 23, 2005
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Phase Forward Incorporated
v.
Mary Noel Adams
________

Opposition No. 91156778
to Serial No. 78169672
_______

David J. Shannon and M. Kelly Tillery of Leonard Tillery &
Sciolla, LLP for Phase Forward Incorporated.

Matthew W. Stavish of Liniak Berenato & White, LLC for Mary
Noel Adams.
_______

Before Seeherman, Bucher and Grendel, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Mary Noel Adams seeks registration on the Principal
Register of the mark PHASE FORWARD (standard character
drawing) for services recited in the application as
“consultation services in the fields of product management,
marketing and business planning,” in International Class 35.1
Registration has been opposed by Phase Forward
Incorporated. As its grounds for opposition, opposer

1 Application Serial No. 78169672 was filed on October 1, 2002
based upon applicant’s allegation of first use anywhere and first
use in commerce at least as early as September 20, 2002.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91156778
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asserts that applicant’s mark when used in connection with
applicant’s services so resembles opposer’s previously used
and registered marks, as well as its “family” of marks, as
to be likely to cause confusion, to cause mistake or to
deceive under Section 2(d) of the Lanham Act, and
furthermore, that should applicant be issued a registration,
it is likely to injure opposer’s business reputation and
dilute the distinctive quality of opposer’s famous trade
name and registered marks under Section 43(c) of the
Trademark Act.
Applicant, in her answer, has denied the salient
allegations in the opposition.
The Record
By operation of the rules, the record includes the
pleadings and the file of the opposed application. Opposer
has also made of record its pleaded registrations by
submitting certified status and title copies of the
following three registrations:
REGISTRATION NO. 2366760 PHASE FORWARD (STANDARD CHARACTER DRAWING)
for “computer software used in the management of clinical trials
of pharmaceutical products and medical devices and management
of data resulting therefrom” in International Class 9;2

2 Registration No. 2366760 issued on July 11, 2000 claiming
first use anywhere at least as early as June 3, 1997 and first use
in commerce at least as early as December 14, 1998.
Opposition No. 91156778
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REGISTRATION NO. 2580055

for “clinical data collection in the field of clinical and
medical trial management and management services related to
human clinical trials” in International Class 42;3 and
REGISTRATION NO. 2599003

for “computer software used in the management of clinical trials
of pharmaceutical products and medical devices and management
of data resulting therefrom” in International Class 9.4

Opposer has also made of record, pursuant to a notice of
reliance, applicant’s responses to opposer’s first set of
interrogatories; the discovery deposition, with the relevant
exhibits, of Mary Noel Adams, the applicant herein; and a
decision by the National Arbitration Forum in a domain name
dispute involving the parties herein.
The parties have fully briefed the case, but an oral
hearing was not requested.
Preliminary matters
Opposer also submitted a number of additional materials
under its notice of reliance. However, for various reasons,
these materials cannot be made of record in this fashion,

3 Registration No. 2580055 issued on June 11, 2002 claiming
first use anywhere and first use in commerce at least as early as
August 15, 2000.
4 Registration No. 2599003 issued on July 23, 2002 claiming
first use anywhere and first use in commerce at least as early as
May 2001.
Opposition No. 91156778
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and therefore they have not been considered. They include
opposer’s own responses to applicant’s first set of
interrogatories. Under the circumstances of this case
(where applicant has submitted no evidence during its
testimony period), an answer to an interrogatory may be
submitted and made part of the record by only the inquiring
party. 37 CFR §2.120(j)(3)(i)(5). Similarly, opposer may
not rely on the discovery deposition of its own corporate
counsel, which was taken by applicant. 37 CFR §2.120(j)(1).
Opposer submitted the pleadings from a domain name
dispute between the parties, but these documents do not
qualify as official records under 37 CFR §2.122(e). As to
the affidavits of Christopher D. Olsyk, Jr., and Lynette H.
Rezac, affidavits cannot be submitted unless the parties
have stipulated to this, and no such stipulations have been
filed. 37 CFR §2.123(b). Furthermore, as to the results of
Mr. Olsyk’s Internet search, printouts from Internet web
searches cannot be submitted by a notice of reliance as they
do not qualify as printed publications under 37 CFR
§2.122(e). See In re Total Quality Group Inc., 51 USPQ2d
1474 (TTAB 1999). See also Raccioppi v. Apogee Inc., 47
USPQ2d 1368 (TTAB 1998) and TBMP Section 708. Finally,
correspondence between opposer’s counsel and applicant’s
counsel does not fall within any of the enumerated
Opposition No. 91156778
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categories of evidence appropriately submitted under a
notice of reliance.
The Facts
Because so much of the material submitted by opposer
was not properly made of record, the only information we
have about opposer is that it is the owner of its three
pleaded registrations and, because Ms. Adams testified in
her discovery deposition that she visited opposer’s website,
we know that opposer has a website.
Applicant adopted the mark PHASE FORWARD during August
2002 and has been in the consulting business as a sole
proprietor since October 2002. Applicant conducts her
business primarily in California, but promotes her mark,
inter alia, in Illinois, Maryland and Texas. Applicant’s
response to Interrogatory No. 2. Applicant also advertises
and conducts business over the Internet. Adams Deposition,
pp. 33-35. Consistent with the recital of services in the
involved application, the evidence of record demonstrates
that applicant provides consultation services in the fields
of product management, marketing and business planning. In
conjunction with Blue Mug, a Berkeley, California software
company, applicant has strategized about the ways in which
health care facilities would develop wireless software
Opposition No. 91156778
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applications to run on handheld devices and wireless phones.
Moreover, applicant has expressed her interest in teaming up
with a health care consultancy firm to equip hospitals with
a “Wireless Fidelity” (Wi-Fi) infrastructure, allowing the
use of personal digital assistants (PDAs) for tasks such as
electronic data capture. In correspondence of record, she
listed nurses, doctors, administration and other healthcare
staff as potential users of these wireless software, devices
and services. Adams Deposition, pp. 63–93, Bates Nos. Adams
214, 217, 204, 405–408, and 484. Applicant testified that
in 2003 her website did list as clients or partners entities
such as McKesson Corporation (provider of healthcare supply,
information and care management products) and Aether Systems
(mobile and wireless data solution provider).
Our Analysis
• Standing
As a preliminary matter, we find that opposer has
established its standing in view of its registrations of the
term PHASE FORWARD.
• Priority
Because opposer has made of record valid and subsisting
registrations of its pleaded registrations, the issue of
priority does not arise. See King Candy Company v. Eunice
Opposition No. 91156778
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King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974); and Carl Karcher Enterprises Inc. v. Stars
Restaurants Corp., 35 USPQ2d 1125 (TTAB 1995).
• Likelihood of Confusion
We turn then to the issue of likelihood of confusion.
Although opposer has pleaded ownership of a family of marks
in its notice of opposition, and has referred to such a
family throughout its briefs, opposer has not demonstrated
that it has promoted any of its marks together, such that
they would be considered a family. See J & J Snackfoods
Corp. v. McDonald’s Corp., 932 F.2d 1360, 18 USPQ2d 1889
(Fed. Cir. 1991). Therefore, we must determine the issue of
likelihood of confusion with respect to the three individual
marks that are the subject of opposer’s registrations.
Our determination of likelihood of confusion must be
based upon our analysis of all of the probative facts in
evidence that are relevant to the factors bearing on the
issue of likelihood of confusion. See In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See also In re Majestic Distilling Company, Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relatedness of the
Opposition No. 91156778
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services and/or goods. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
See also In re Dixie Restaurants Inc., 105 F.3d 1405,
41 USPQ2d 1531 (Fed. Cir. 1997).
We turn then to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial
impression. In this case, as to opposer’s first cited
registration, the marks of the parties are identical in
sound and appearance.
As to opposer’s two design marks, the literal elements
are identical to applicant’s mark as to sound, and as to
appearance, they are substantially the same as applicant’s
mark. Although opposer’s design marks also contains a “PF”
design, it is the PHASE FORWARD portion that is the dominant
element of these marks, since consumers will call for
opposer’s goods and services using this term. See In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Although we have compared the marks in their entireties, we
have thus accorded greater weight to the PHASE FORWARD
portion of opposer’s registered marks. See In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985) [in articulating reasons for reaching a conclusion on
the issue of likelihood of confusion, there is nothing
Opposition No. 91156778
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improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests upon a consideration
of the marks in their entireties].
However, despite the fact that the term PHASE FORWARD
is the same in both marks, because of the goods and services
with which the respective marks are used, they have
connotative differences. With respect to opposer’s goods
and services, the term “phase” suggests a connection with
FDA processes, such as “Phase II clinical trials.” For
applicant’s mark, applicant’s website shows a presentation
topic known as “New Product Development – Phase 0: Ideation
and Concept Generation.” Accordingly, prospective customers
are likely to view the word “phase” in opposer’s mark as
suggestive of a “phase” of clinical trials, while
applicant’s usage may be suggestive generally of a discrete
piece of a consultation service project. Thus, while the
parties’ marks are identical in sound and nearly identical
in appearance, because of the differences in connotation we
cannot say that they convey the same commercial impression.
See In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984)
[the mark PLAYERS has different connotations when applied to
shoes and to men’s underwear]. Thus, we do not think it
appropriate under these circumstances to apply the general
Opposition No. 91156778
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principle that, when the marks in question are identical (or
substantially so), their contemporaneous use can lead to the
assumption that there is a common source “even when [the]
goods or services are not competitive or intrinsically
related.” In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1689 (Fed. Cir. 1993).
We turn next to the du Pont factor focusing on the
similarities/dissimilarities of the goods and services. It
is well settled that the registrability of applicant’s mark
must be evaluated on the basis of the recitation of services
as set forth in the involved application, compared with the
recitation of services and/or the identification of goods
contained in the pleaded registrations of record. See
Octocom Systems Inc. v. Houston Computer Services Inc., 918
F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990) and Canadian
Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Additionally,
absent any specific limitations in applicant’s
identification of goods and the identification of goods and
recitation of services contained within opposer’s
registrations, the issue of likelihood of confusion must be
determined by looking at all the usual channels of trade and
methods of distribution for the respective services and
Opposition No. 91156778
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goods. See CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198
(Fed. Cir. 1983).
Opposer acknowledges that there are obvious differences
between opposer’s services and goods and applicant’s
services. Nonetheless, opposer argues that:
… it is clear that the goods and services are
related and that the public will be confused
as to the source of the goods or services
from Applicant if she is allowed to use the
mark for consultation and business planning
services in and to the pharmaceutical,
software and healthcare industries.
Applicant’s use of the mark will infringe
upon related goods/services produced by
Opposer. Applicant has marketed herself to
pharmaceutical and software industries for
assistance in the creation of wireless
networks and has indicated plans to expand to
related goods/services including consultation
and assistance in the fields of electronic
data capture. This electronic data capture
software and related services are precisely
the goods and services Opposer markets to the
public.

Opposer’s brief, pp. 16 – 17.
Opposer is correct in noting that goods and services
need not be identical in order to support a finding of
likelihood of confusion. On the other hand, opposer has the
burden of proof in this proceeding to demonstrate a
relatedness of the services and/or goods, as well as to show
an overlap of customers and institutions.
Based on the limited record before us, we cannot
determine exactly who opposer’s customers are. Although by
Opposition No. 91156778
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the very identifications of opposer’s goods and services, it
is obvious that they are used in connection with clinical
trials of pharmaceutical products, it is not clear whether
these goods and services would be sold or offered to
hospitals or other health care facilities, or whether they
would be purchased only by pharmaceutical companies whose
products are being tested, such that the entities actually
carrying out the trials would not encounter opposer’s mark.
Thus, even though we must construe applicant’s identified
consultation services as encompassing consultation services
rendered to those in the healthcare field (a supposition
confirmed by the evidence showing that applicant is
interested in teaming up with a consultancy firm to equip
healthcare facilities with wireless infrastructures allowing
for tasks such as electronic data capture (Adams Deposition,
pp. 79 – 101)), we cannot find, based on this limited
record, that there is an overlap between opposer’s and
applicant’s customers. Moreover, even if we were to assume
that opposer and applicant could offer their respective
goods and services to healthcare facilities such as large
research hospitals, we cannot determine, from this limited
record, that the individual consumers within such large
institutions would be the same. For example, pharmaceutical
companies may purchase and then supply to those doctors
Opposition No. 91156778
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carrying out clinical tests the specific software that they
purchase from opposer, while others in the administration
area of the hospital would encounter applicant’s
consultation services. See Electronic Design & Sales v.
Electronic Data Systems, 954 F.2d 713, 21 USPQ2d 1388, 1392
(Fed. Cir. 1992) [The Court found no likelihood of confusion
resulting from the contemporaneous use of applicant’s mark
E.D.S. and opposer’s mark EDS despite the fact that “the two
parties conduct business not only in the same fields but
also with some of the same companies.” 21 USPQ2d at 1391];
see also In re N. A. D. Inc., 754 F.2d 996, 224 USPQ 969, 971
(Fed. Cir. 1985). We cannot base a finding of relatedness of
services and/or goods on mere speculation, and on this
record, find that opposer has failed to show that opposer’s
goods and services and applicant’s consultation services are
related. Thus, this key du Pont factor favors applicant.
We turn then to the du Pont factor focusing on the
conditions under which and buyers to whom sales are made.
Given the respective recitations of services and
identification of goods, by definition, opposer’s services
and goods and applicant’s services are not purchased
casually by ordinary consumers. Such purchasers, even if
they were to encounter both parties’ services and goods, are
not likely to believe that all goods and services that are
Opposition No. 91156778
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offered in the healthcare area emanate from a single source
simply because they are sold or rendered under the same
mark. This du Pont factor clearly favors applicant.
Opposer has not submitted any evidence on the factor of
the fame of opposer’s marks or the factor of the variety of
services and goods on which opposer’s mark is used, and
therefore we find these factors to be neutral.
In conclusion, although the parties have similar marks,
we find, based on this record, that opposer has failed to
prove that applicant’s services are sufficiently related to
opposer’s goods and services that confusion is likely. When
we consider all the du Pont factors on which there is
evidence, we find that opposer has not shown by a
preponderance of the evidence that confusion is likely.
Accordingly, we dismiss the opposition on the ground of
likelihood of confusion.
• Dilution
In addition to its claim of likelihood of confusion,
opposer has also pressed a claim of dilution. The Federal
Trademark Dilution Act (FTDA) provides a federal cause of
action for the dilution of a famous mark, and the Trademark
Amendments Act of 1999 (TAA) “requires the Board to consider
Opposition No. 91156778
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dilution under the FTDA as a ground for opposition.”5 Toro
Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001). To
prevail on its dilution claim, opposer must establish, inter
alia, that its mark is famous. Furthermore, establishing
fame for dilution purposes is a more rigorous endeavor than
establishing the renown of a mark for a Section 2(d)
likelihood of confusion analysis. Toro, 61 USPQ2d at 1180-
81. Accordingly, having found supra that opposer’s PHASE
FORWARD marks have not been shown to be well-known in the
context of our likelihood of confusion analysis, and, in
fact, that opposer submitted absolutely no evidence of fame,
they are ipso facto not famous for purposes of dilution.
Accordingly, we dismiss the opposition on the ground of
dilution.
Decision: We dismiss the opposition on the grounds of
likelihood of confusion and dilution.

5 The FTDA, 109 Stat. 985, is codified at Section 43(c) of the
Lanham Act, 15 U.S.C. §1125(c), with dilution defined in Section
45, 15 U.S.C. §1127, and the TAA, 113 Stat. 218, is codified in
various sections of Title 15 of the U.S. Code.