SmithKline Beecham Corp.

Trademark Trial and Appeal Board

Sep 18, 2002

No. 78023396 (T.T.A.B. Sep. 18, 2002)

Mailed: 18 SEP 2002
Paper No. 11
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re SmithKline Beecham Corporation1
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Serial No. 78/023,396
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Maury M. Tepper, III of Womble Carlyle Sandridge & Rice for
SmithKline Beecham Corporation.
Esther Borsuk, Trademark Examining Attorney, Law Office 116
(Meryl Hershkowitz, Managing Attorney).
_______
Before Seeherman, Bucher and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
SmithKline Beecham Corporation (applicant) applied to
register the mark CASEY (in typed form) on the Principal
Register for services ultimately identified as:
Health care analysis services, namely, providing
employers and managed care organizations information
on health care costs associated with asthma and on
cost savings associated with treatments for asthma, by
using actuarial models to estimate direct medical
costs and lost productivity costs due to asthma;
analysis services, namely, providing employers and
1 The application was originally filed by Glaxo Wellcome, Inc.
It was subsequently assigned to SmithKline Beecham Corporation as
a result of a merger. See Reel/Frame No. 2334/0278.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 78/023,396
2
managed care organizations information on health care
costs associated with asthma and on cost savings
associated with treatments for asthma, by using
actuarial models to estimate direct medical costs and
lost productivity costs due to asthma in International
Class 35.
Health care consultation services in International
Class 42.2
The examining attorney refused to register applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), because the examining attorney determined that
there was a likelihood of confusion between that mark and a
registration for the mark CASEY (in typed form) for
“educational services, namely, providing classes, seminars,
and training in the field of health care” in International
Class 41 and “medical research services and health care
services” in International Class 42.3
After the examining attorney made the refusal final,
this appeal followed.
The examining attorney argues that the marks are
identical and that “applicant’s health care cost analysis
and health care consultation services and the registrant’s
health care services would be encountered by the same
2 Serial No. 78/023,396, filed August 29, 2000. The application
is based on applicant’s assertion of a bona fide intention to use
the mark in commerce.
3 Registration No. 2,355,403, issued on June 6, 2000, under the
provision of Section 2(f) of the Trademark Act.
Ser No. 78/023,396
3
purchasers and under the same circumstances.” Brief at 4.
The examining attorney also submitted copies of
registrations to show that “health care consultation
services and health care cost analysis services are
marketed under the same service mark as health care
services.” Br. at 4. The examining attorney concluded
that since the marks are identical and the services travel
in the same channels of trade, confusion is likely.
Applicant makes four basic arguments in response to
the examining attorney’s refusal. First, applicant argues
that its “business consulting services are sold in
different channels of trade and sold to different types of
customers than the health care services offered by
Registrant in the field of ophthalmology and eye care.”
Brief at 3. Second, applicant’s business consulting
services are fundamentally different from registrant’s
health care services. Third, the purchasers are
sophisticated and, fourth, the marks have different
connotations. Brief at 3. Therefore, applicant submits
that confusion is unlikely.
We affirm the refusal to register under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d).
Determining whether there is a likelihood of confusion
requires application of the factors set forth in In re
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4
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973). See also Recot, Inc. v. Becton, 214
F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). In
considering the evidence of record on these factors, we
must keep in mind that “[t]he fundamental inquiry mandated
by § 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Despite applicant’s argument that the marks have
different commercial impressions, we note that applicant’s
and registrant’s marks are identical. Both marks are for
the identical word, “CASEY,” in typed form. While
applicant argues that its mark is an acronym for “Cost
Analysis, Statistics & Economics for You” and registrant’s
mark is associated with the Casey Eye Institute, it does
not change the fact that there are no differences between
the two marks.
Next, we consider whether the services of the parties
are related. Applicant attempts to limit registrant’s
services to ophthalmology and eye care services. See,
e.g., “[T]he health care services in the Cited Registration
relate exclusively to the field of ophthalmology and eye
care and research and are offered exclusively to patients
Ser No. 78/023,396
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and ophthalmologists and in connection with research
conducted at the Casey Eye Institute at the Oregon Health
Services University.” Brief at 54. We emphasize that the
services identified in the registration are not limited in
this way. In fact, the services are identified simply as
“medical research services and health care services.”
We are not at liberty to restrict a registration’s
identification of goods or services based on applicant’s
evidence of how registrant is actually using its mark.
Paula Payne Products v. Johnson Publishing Co., 473 F.2d
901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases
involving the issue of likelihood of confusion must be
decided on the basis of the respective descriptions of
goods”); In re Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d
1531, 1534 (Fed. Cir. 1997) (punctuation in original),
4 With its Brief, applicant attached three exhibits. The
examining attorney objects to these exhibits. We will not
consider Exhibits B and C because they were not previously made
of record. 37 CFR § 2.142(d) (Exhibit A was made of record
previously). In addition to the exhibits submitted with its
appeal brief, applicant also submitted a list of registration
numbers, classes, marks, and goods and services with its response
dated April 5, 2001 (Attachment D). In the next Office action,
the examining attorney noted that “applicant failed to make the
registrations properly of record.” Office action dated June 19,
2001, p. 3. Applicant did not submit copies of these
registrations with its subsequent request for reconsideration.
We will not consider these registrations because they are not
properly of record. In re Hub Distributing, Inc., 218 USPQ 284,
285 (TTAB 1983) (“[W]e do not consider a copy of a search report
to be credible evidence of the existence of the registrations and
the uses listed therein”). In any event, most of the
registrations are for unrelated goods and services.
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quoting, Canadian Imperial Bank of Commerce v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1816 (Fed. Cir. 1987)
(“`Likelihood of confusion must be determined based on an
analysis of the mark applied to the … services recited in
applicant’s application vis-à-vis the … services recited in
[a] … registration, rather than what the evidence shows the
… services to be’”). See also Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed”).
While applicant has limited its health care analysis
services to the field of asthma, registrant’s services and
applicant’s health care consultation services are not
limited to any specific field of medicine. Thus, we must
consider that the services rendered under the mark could
include medical research, health care, and classes and
training in health care relating to asthma. Registration
Nos. 2,372,769; 2,277,272; 2,129,905; and 1,977,996 provide
some support for the examining attorney’s position that
Ser No. 78/023,396
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health care services and health care consultation services
are related because they show that these services often
originate from the same source under the same mark. See In
re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988) (Although third-party registrations “are not evidence
that the marks shown therein are in use on a commercial
scale or that the public is familiar with them, [they] may
have some probative value to the extent that they may serve
to suggest that such goods or services are the type which
may emanate from a single source”). See also In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
Furthermore, the registrations of record also show
that applicant’s other identified services, health care
analysis services, are related to registrant’s services.
For example, Registration No. 1,977,996 shows the same mark
used in connection with managed health care services and
providing statistical information on incidents of illness
to determine the viability and need for educational
wellness programs. Registration No. 2,433,306 shows health
care services and health care utilization and review
services; and Registration No. 2,251,350 is for health care
services and medical cost management services for others.
Applicant’s health care analysis services of providing
information on health care costs to estimate the direct
Ser No. 78/023,396
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medical costs and lost productivity due to asthma are
related to registrant’s health care services because
providers of health care services are also the source of
services involving various medical cost and utilization
management services, which would be similar to applicant’s
health care analysis services.
“In order to find that there is a likelihood of
confusion, it is not necessary that the goods or services
on or in connection with which the marks are used be
identical or even competitive. It is enough if there is a
relationship between them such that persons encountering
them under their respective marks are likely to assume that
they originate at the same source or that there is some
association between their sources.” McDonald's Corp. v.
McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989). Furthermore,
when both parties are using or intend to use the identical
designation, “the relationship between the goods on which
the parties use their marks need not be as great or as
close as in the situation where the marks are not identical
or strikingly similar.” Amcor, Inc. v. Amcor Industries,
Inc., 210 USPQ 70, 78 (TTAB 1981). See also In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir.
1993) (“[E]ven when goods or services are not competitive
Ser No. 78/023,396
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or intrinsically related, the use of identical marks can
lead to an assumption that there is a common source”).
Here, prospective purchasers are likely to assume that
there is a relationship between registrant’s health care
services and applicant’s health care consultation services
and health care analysis services in the field of asthma.
Businesses that are in the market for health care services
for their employees would also be interested in health care
consulting services and health care analysis services to
reduce costs, improve efficiency, and encourage the good
health of their employees.
Even if we assume that the purchasers of these
services would be sophisticated purchasers, this fact would
not eliminate the likelihood of confusion when the
identical mark CASEY is used on the services of applicant
and registrant. Octocom Systems, 16 USPQ2d at 1787. Even
sophisticated purchasers would likely be confused when the
identical marks are used on health care and health care
consultation and analysis services.
Finally, to the extent that there is any doubt
regarding the question of the likelihood of confusion, we
must resolve this doubt in favor of the registrant and
against the newcomer. Kenner Parker Toys v. Rose Art
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Industries, 963 F.2d 350, 22 USPQ2d 1453, 1458 (Fed. Cir.
1992).
Decision: The refusal to register applicant’s mark
under Section 2(d) is affirmed.