Talis Clinical, LLCv.Talis Biomedical Corporation

Trademark Trial and Appeal Board

Sep 8, 2021

91245179 (T.T.A.B. Sep. 8, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 8, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Talis Clinical, LLC

v.

Talis Biomedical Corporation

_____

Opposition No. 91245179
_____

Brian Harrod of Moxon & Associates LLC
for Talis Clinical LLC.

John Paul Oleksiuk of Cooley LLP
for Talis Biomedical Corporation.
_____

Before Wellington, Heasley and English,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Talis Biomedical Corporation (“Applicant”) seeks registration on the Principal
Register of the mark TALIS in standard characters for the following services:
Medical analysis services in the nature of analyzing clinical data for
purposes of providing medical diagnostic information and for guiding
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patient treatment for overall population health and improved patient
outcomes, in International Class 44.1

Talis Clinical LLC (“Opposer”) opposes registration of the applied-for mark on the
ground of likelihood of confusion. Opposer alleges, inter alia, that:
“[f]or many years, and long before to the acts of Applicant alleged herein,
[it] has been engaged, inter alia, in creating and selling medical software
and hardware for collecting, organizing, and analyzing patient data, and
providing clinical guidance, monitoring and support services in the fields
of selection, implementation, and operation of hardware, software systems
and secure data storage and access”;2

through a predecessor in interest, Opposer owns rights in the TALIS mark
for software and services involving the “provi[sion of] guidance that could
expose opportunities to improve patient care in real-time at the point of
care”;3

“[o]n June 19, 2013, Opposer filed an application to register the term
TALIS for ‘Medical software for recording, monitoring, organizing, and
analyzing data obtained from medical patient monitoring equipment,’
application serial no. 85964798. The application was rejected for being
primarily merely a surname” and “[t]he application was dropped by
Opposer due to this rejection; however Opposer Talis Clinical continued
and continues to use TALIS as a mark in relation to its goods and
services.”4

“[s]ince 2012, [Opposer] has devoted substantial resources, time and effort
to marketing, promoting and distributing its TALIS branded medical
software and services”;5 and

1 Application Serial No. 87879083 was filed on April 16, 2018, based on Applicant’s allegation
of a bona fide intent to use of the mark in commerce under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b).
2 1 TTABVUE 4 (Notice of Opp. ¶ 1).
3 Id. (Notice of Opp. ¶ 2). As for the succession in interest as to the first use of the TALIS
mark, Opposer alleges Talis Equity, LLC is the ultimate successor, and that “Talis Equity
set up [Opposer] to manage the intellectual property that was developed at the Cleveland
Clinic for a medical documentation system.” Id. (Notice of Opp. ¶ 3).
4 Id. at 5 (Notice of Opp. ¶ 5).
5 Id. at 4 (Notice of Opp. ¶ 2).
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the parties’ goods and services “travel in the same channels of trade and
are viewed by the same customers including hospitals, clinics, and other
medical professionals” and thus “are therefore substantially similar[.]”6

In its answer, Applicant admits certain allegations, but otherwise denies the
salient allegations of the Notice of Opposition.7
The parties have briefed the opposition.
I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
Applicant’s application file.
Opposer, during its main trial period, submitted the testimony declaration, with
accompanying exhibits, of William Murphy, Opposer’s Vice President of Regulatory
and Quality.8 Opposer also filed a notice of reliance on the following:
 Opposer’s applications Ser. Nos. 88221506 and 88655305 (for marks,
respectively, TALIS and TALIS-HUB), including office actions;

 Opposer’s registrations (Reg. Nos. 4912189, 4912190, 4917186, 5082780) for
various non-TALIS related marks, but with specimens of use that Opposer
argues show “use of the mark TALIS.”9

 Applicant’s responses to Opposer’s Interrogatories Nos. 1-3.

6 Id. at 6-7 (Notice of Opp. ¶ 12).
7 7 TTABVUE (Answer).
8 14 TTABVUE and 15 TTABVUE (designated “Confidential” copy).
9 13 TTABVUE.
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Applicant, during its trial period, submitted the testimony deposition transcript
of William Murphy.10 Applicant also filed notices of reliance on the following
materials:11
 TSDR electronic database printouts for the file of Opposer’s abandoned
application (Ser. No. 85964798);

 TSDR electronic database printouts for the file of Applicant’s application (Ser.
No. 87879055) for the mark TALIS for “medical diagnostic apparatus and
instruments for detection, identification, and assessment of infectious
diseases” in Class 10; and

 Copies of third-party registrations, with printouts from the registrants’
websites, for purposes of showing weakness and that the term TALIS is
“diluted due to use by third parties of similar marks on similar services.”12

II. Opposer’s Entitlement to Statutory Cause of Action
Every plaintiff in an inter partes case must establish that it is entitled to a
statutory cause of action. See Australian Therapeutic Supplies Pty. Ltd. v. Naked TM,
LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020) reh’g en banc denied,
981 F.3d 1083, 2020 USPQ2d 11438 (Fed. Cir. 2020), petition for cert. filed (citing
Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 109 USPQ2d
2061, 2067 n.4 (2014)). An opposer may challenge the registration of another’s mark
when such opposition is within the zone of interests protected by the statute, 15
U.S.C. § 1063, and the opposer has a reasonable belief in damage that is proximately

10 27 TTABVUE.
11 28-31 TTABVUE. We note that the sole purpose of one of Applicant’s notices of reliance (29
TTABVUE) was for submission of a copy of the Notice of Opposition. This was unnecessary
because, as stated supra, the pleadings consisting of the Notice of Opposition and Answer,
are automatically of record.
12 30 TTABVUE 2.
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caused by registration of the defendant’s mark. Corcamore, LLC v. SFM, LLC, 978
F.3d 1298, 2020 USPQ2d 11277, at *6-7 (Fed. Cir. 2020), cert. denied, ___ U.S. ___
(2021).13
Under the statute, “[a] claim of likelihood of confusion that ‘is not wholly without
merit,’ including prior use of a confusingly similar mark, may be sufficient ‘to
establish a reasonable basis for a belief that one is damaged.’” DeVivo v. Ortiz, 2020
USPQ2d 10153, at *2 (TTAB 2020). Opposer’s Vice President, William Murphy,
averred that, on the same day it filed the Notice of Opposition, Opposer filed
application Ser. No. 88221506 to register the mark TALIS for “medical software for
collecting, organizing, and analyzing patient data, and providing clinical guidance”
in Class 9, and “monitoring and support services in the fields of selection,
implementation, and operation of hardware, software systems and secure data
storage and access systems, namely, collecting, organizing, and analyzing patient
data, and providing clinical guidance” in Class 42.14 Murphy further averred that the
USPTO issued a “Suspension Notice office action … citing likelihood of confusion

13 Standing to file an opposition under the statute is now termed entitlement to a statutory
cause of action. Major League Soccer, LLC v. F.C. Int’l Milano S.p.A., 2020 USPQ2d 11488,
at *5 n. 18 (TTAB 2020). Despite the change, our prior decisions on “standing” and those of
the Federal Circuit interpreting Sections 13 and 14 remain applicable. Corcamore v. SFM,
2020 USPQ2d 11277, at *4. As the Court of Appeals for the Federal Circuit has observed,
there is “no meaningful, substantive difference between the analytical frameworks” in the
prior “standing” case law, under which a plaintiff must show a real interest in the proceeding
and a reasonable basis for its belief in damage, see Empresa Cubana Del Tabaco v. Gen. Cigar
Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014), and the current “entitlement”
case law, under which a plaintiff must show an interest falling within the zone of interests
protected by statute and damage proximately caused by registration. Corcamore v. SFM,
2020 USPQ2d 11277, at *4.
14 14 TTABVUE 6 (Murphy Decl. ¶ 13).
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issues … pending registration of [Applicant’s applied-for mark].”15 A copy of the Office
Action informing Opposer of a potential refusal to registration based on a likelihood
of confusion with Applicant’s applied-for mark is attached to the Murphy
declaration.16
Murphy also states that Opposer’s prior application (Ser. No. 85964798, filed June
19, 2013) was abandoned after the mark was refused registration by the Office on the
basis that the mark is primarily merely a surname; however, Murphy further states
that Opposer “continued and continues to use TALIS as a mark in relation to its goods
and services.”17 Applicant submitted a copy of the application file for the now-
abandoned application, including a copy of the Office action.18 Taken together, the
aforementioned evidence establishes Opposer’s entitlement to oppose registration of
Applicant’s mark. See, e.g., Empresa Cubana, 111 USPQ2d at 1062; Tri-Star
Marketing, LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1914 (TTAB
2007) (plaintiff “petitioner has standing to bring the petition for cancellation based
on the fact that its application to register [its mark] was refused registration by the
office under Section 2(d) based on a likelihood of confusion with respondent’s
previously registered mark”); Weatherford/Lamb Inc. v. C&J Energy Servs. Inc., 96
USPQ2d 1834, 1837 (TTAB 2010); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020,

15 Id. at 8 (Murphy Decl. ¶ 22).
16 Id. at 121-122 (Murphy Ex. H).
17 Id. at 4 (Murphy Decl. ¶ 6).
18 28 TTABVUE 6-140.
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1022 (TTAB 2009) (common law use sufficient to establish standing). Applicant does
not contest Opposer’s statutory entitlement to oppose its application.
III. Priority
To prevail under Section 2(d) of the Trademark Act, Opposer must prove that it
has proprietary rights in the term it relies upon to demonstrate likelihood of
confusion as to source. Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209
USPQ 40, 43 (CCPA 1981). In an opposition, a party may establish its own prior
proprietary rights in a trademark through ownership of a registration, through actual
use, or through use analogous to trademark use. T.A.B. Sys. v. PacTel Teletrac, 77
F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996), vacating PacTel Teletrac v. T.A.B. Sys.,
32 USPQ2d 1668 (TTAB 1994).
Applicant, for its part, does not need to prove use in commerce but may rely on
the filing date of its intent-to-use application, April 16, 2018, as the constructive use
date for purposes of priority. Section 7(c) of the Act, 15 U.S.C. §1057(c). Spirits Int’l.
B.V. v. S. S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d
1545, 1549 (TTAB 2011); Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d
1840, 1844 (TTAB 1995); Zirco Corp. v. American Tel. and Tel. Co., 21 USPQ2d 1542,
1544 (TTAB 1991). In its brief, Applicant acknowledges that it “has not sold or
transported goods or rendered services under the TALIS mark in the ordinary course
of trade,” but also argues that it “has been using the TALIS mark in a public-facing
manner to associate the mark with itself and its forthcoming products for at least
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three years without any consumer confusion.”19 Applicant, however, does not assert
any date prior to its filing of the involved application for purposes of priority.
Thus, it is incumbent upon Opposer to establish priority before April 16, 2018,
Applicant’s filing and constructive use date.
A. Opposer’s Evidence of Prior Use
In its trial brief, Opposer argues it has priority because “for nearly 6 years prior
to [Applicant’s filing date] – Opposer had continuously used its TALIS Mark[ ].”20 In
support of its argument, Opposer relies entirely on the testimony declaration, with
accompanying exhibits, of William Murphy, who makes averments that essentially
mirror Opposer’s allegations in the Notice of Opposition, including that:
 Talis Equity, LLC is a successor in interest, by way of name changes, initially
from a company that “was formed in 2009 as an initiative started at the
Cleveland Clinic, in Cleveland, Ohio, to build a medical record documentation
system to support Anesthesia care” and that “[t]his extensive development
moved from documenting complex anesthesia workflows to providing guidance
that could expose opportunities to improve patient care in real-time at the
point of care by providing services and/or products under the trademark
TALIS.”21

 “Talis Equity set up [Opposer] to manage the products, services, and
intellectual property that were developed at the Cleveland Clinic for a medical
documentation system.”22

19 34 TTABVUE 35. Applicant did not introduce sufficient evidence to rely on such use for
purposes of priority. “Attorney argument is no substitute for evidence.” Zheng Cai v.
Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (quoting Enzo
Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005)). In
a discovery response, Applicant also admits that it “has not yet commenced use [of its mark]
in commerce.” 13 TTABVUE 77 (Applicant’s response to Opposer’s Interrog. No. 2).
20 32 TTABVUE 13.
21 14 TTABVUE 3 (Murphy Decl. ¶ 4).
22 Id. (Murphy Decl. ¶ 5).
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 “Since 2012, [Opposer] has devoted substantial resources, time and effort to
marketing, promoting and distributing its TALIS branded medical software
and services.”23

 Although Opposer’s application (Ser. No. 85964798), filed in 2013, “was
rejected for being primarily merely a surname [and] the application became
abandoned,” Opposer “continued and continues to use TALIS as a mark in
relation to its goods and services.”24

 “Examples of [Opposer’s] continued use include [its registered] ACG-
PROVIDER PORTAL, ACG-Vitruvian, ACG-REMOTE VIEW PACU, and
ACG-REMOTE VIEW OR marks, which are sold and used in association with
the TALIS mark” and that the specimens filed in connection with those
registrations, submitted as exhibits with the declaration, “included the TALIS
mark.”25

 “As further evidence of [Opposer’s] use of the TALIS trademark in United
States commerce in connection with TALIS goods and services, [Opposer]
refers to the following sales and service contracts,” including a “[s]ales and
service contract dated July 17, 2015 between [Opposer] and … a Colorado-
based entity, for providing medical hardware, software, and services” and
another “[s]ales and service contract dated December 1, 2016 between
[Opposer] and … a Michigan-based entity, for providing medical hardware,
software, and services.”26

The specimens of use to which Murphy refers were screenshot printouts Opposer
filed with its applications to register marks other than TALIS. Each screenshot shows
the stylized term TALIS prominently at the top left in a title bar, alongside a logo
and followed by CLINICAL LLC in significantly smaller lettering. For example, the
specimen from the file of Reg. No. 4912189 for the mark ACG-PROVIDER PORTAL
appears as follows:

23 Id. (Murphy Decl. ¶ 4).
24 Id. at 4 (Murphy Decl. ¶ 6).
25 Id. at 5-6 (Murphy Decl. ¶¶ 6-10, referring to Murphy Exs. A-D).
26 Id. at 5-6 (Murphy Decl. ¶ 11, referring to Murphy Exs. E and F).
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.27
Similarly, the specimen submitted from the file of Reg. No. 4912190 for the mark
“ACG-VITRUVIAN” appears as follows:
.28
On cross-examination, Murphy clarified that the first was a screenshot of a
“public-facing website” and that the “Provider Portal is a website that’s dedicated to

27 Id. at 14 (Murphy Ex. A).
28 Id. at 16 (Murphy Ex. B).
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that particular facility or the practitioner has access to, if they’re in multiple -- service
multiple facilities.”29 The screenshots were created by one of Opposer’s web
developers who logged into the website “to be able to show what the practitioner
would see when they first went into the portal.”30 According to Murphy, the “ACG-
Provider Portal product” was first sold in 2015 and “would have been part of the 2015
[sales and service agreement Opposer entered into with a Colorado-based entity].”31
Although Murphy acknowledges in his deposition that Opposer had not sold any
of the goods covered by those ACG-formative applications before December 31, 2014,
when the use-based applications were filed,32 he avers that the screenshots were “part
of the marketing strategy, marketing efforts while we were trying to line up
customers prior to actually having the first contract.”33 More importantly, and as
corroborated by the sales and service agreements that are of record, Murphy’s
testimony makes clear that a “Colorado-based entity” entered into a contract to
purchase Opposer’s software and services on July 17, 2015, so that entity would have

29 27 TTABVUE 46-47 (Murphy dep. 42:10-11; 43:4-7).
30 Id.; (43:8-11).
31 27 TTABVUE 45 (41:22-23). A copy of this agreement is attached to the Murphy
declaration. 14 TTABVUE 22-67.
32 Specifically, Murphy states that at the time the specimens were created, “there were no
actual customer accounts.” 27 TTABVUE 52, 48:10-11. We hasten to add that the validity of
the registrations and whether Opposer made use in commerce of the registered marks prior
to the filing of its use-based applications, as required Trademark Act Section 1(a)(1), 15
U.S.C. § 1051(a)(1), is not an issue before us and we make no conclusions in this regard.
33 27 TTABVUE (Murphy dep. 48:22-25).
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been exposed to Opposer’s use of TALIS in the manner demonstrated in the
specimens.34
B. Analysis
Opposer’s placement of the TALIS mark—such that it appears prominently on the
user’s computer screen in a title or ribbon bar when the software is in use—is a
recognized sort of trademark use for software. See, e.g., In re Minerva Assoc., Inc., 125
USPQ2d 1634, 1639 (TTAB 2018) (“software providers have adopted the practice of
applying trademarks that are visible only when the software programs are displayed
on a screen … an acceptable specimen might be a photograph or screenshot of a
computer screen displaying the identifying trademark while the computer program
is in use.”) See also TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) §
904.03(e) (July 2021) (discussion regarding demonstration of use of trademarks for
computer software). In other words, consumers using Opposer’s software and
encountering the TALIS mark in the manner shown in Opposer’s specimens would
associate the term TALIS with Opposer as a source-identifier for the software.
The fact that the specimens were submitted for non-TALIS-formative marks does
not detract from the source-identifying significance of TALIS. It has long been held
that an entity may use more than one mark on the same product. See Top Tobacco,
L.P. v. N. Am. Atl. Operating Co., Inc., 101 USPQ2d 1163, 1177 n. 19 (TTAB 2011)

34 This is the date of execution of Opposer’s sales and service contract with the Colorado-
based entity. 14 TTABVUE 21 et seq. (Murphy Ex. E).
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(citing Safe-T Pacific Co. v. Nabisco, Inc., 204 USPQ 307, 315 (TTAB 1979) (packaging
for a product may contain multiple marks)).
Applicant argues that in Opposer’s sales and service agreements from 2015 and
2016, “the term ‘TALIS’ appears in these contracts . . . only in reference to Opposer’s
company name, not as a trademark.”35 We agree with Applicant that Opposer’s sales
and services agreements do not, by themselves, demonstrate prior use of TALIS on
Opposer’s software. However, as discussed, these sales and service agreements are
relevant for purposes of corroborating Murphy’s testimony and helping to show that
Opposer’s consumers were using Opposer’s software in 2015 (for an “ACG-Anesthesia
System” comprising hardware and software) and 2016 (for an “ACG-Perfusion
System” comprising hardware and software), and that the TALIS mark was being
viewed in the marketplace by the consumers when the software was in use prior to
April 16, 2018.
In addition, although the term TALIS appears in the screenshots directly above
“CLINICAL LLC,” thus forming Opposer’s corporate name, “[i]t is well established
that under appropriate circumstances a notation may function both as a trade name
and as a trademark, and whether or not a term used as a trade name or as a part
thereof also performs the function of a trademark is one of fact, which is to be

35 34 TTABVUE 19. The term “trade name” is defined in the [Trademark] Act to mean “any
name used by a person to identify his or her business or vocation” as distinguished from a
trademark or service mark which is defined to mean a name or symbol used to identify and
distinguish goods or services from those of others and to indicate the source of those goods or
services. Nat’l Cable Television Ass’n v. Am. Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d
1424, 1428 (Fed. Cir. 1991) (citing Trademark Act Section 45, 15 U.S.C. § 1127 (definitions
of “trade name,” “trademark” and “service mark”)).
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determined from the manner in which it is used, and the probable impact thereof
upon purchasers . . .” In re Unclaimed Salvage & Freight Co., Inc., 192 USPQ 165,
167 (TTAB 1976) (quoting Lytle Eng’g. & Mfg.Co., 125 USPQ 308 (TTAB 1960)). “The
question of whether a name used as a trade name or a part thereof also performs the
function of a trademark and/or a service mark is one of fact” and is “determined from
the manner in which the name is used and the probable impact thereof upon
purchasers and prospective customers.” In re Univar Corp., 20 USPQ2d 1865, 1866
(TTAB 1991). As further explained by Professor McCarthy in the context of
registrability, “[i]f a word, even though a part of the company name, is used so as to
create an impression separate and apart from the company name, this tends to show
a proper trade or service mark usage and the term can be registered.” J. Thomas
McCarthy, 1 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 9:14 (5th ed.
2021 Update) (citing Lytle Eng’g, 125 USPQ 308). In this case, TALIS, as displayed
in the specimen screenshots, clearly conveys a separate commercial impression to
consumers. It appears most prominently at the top of the screen in significantly larger
black stylized lettering, whereas the “Clinical LLC” is in smaller, white block
lettering that more closely matches the “navigation” menu on the portal screen.
In determining whether a party has established prior rights in a term, we must
“look[] at the evidence as a whole, as if each piece of evidence were a part of a puzzle
[to be] fitted together.” W. Fla. Seafood Inc. v. Jet Rests. Inc., 31 F.3d 1122, 31
USPQ2d 1660, 1663 (Fed. Cir. 1994). Here, we have reviewed all of the evidentiary
pieces, including Murphy’s testimony and the accompany exhibits, regarding how
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Opposer uses the term TALIS with its software, as well as the sales and service
agreements that help show when the software was first being sold to and used by
Opposer’s customers. When all the evidence is viewed together, we ultimately find
that Opposer has demonstrated that it first used the term TALIS as a mark in
connection with its software in 2015. Accordingly, Opposer we find Opposer has
established prior common law rights in a TALIS mark for software.
IV. Likelihood of Confusion
We turn now to Opposer’s claim under Section 2(d) of the Trademark Act, which
prohibits the registration of a mark that “[c]onsists of or comprises a mark which so
resembles a mark registered in the Patent or Trademark Office, or a mark or trade
name previously used in the United States by another and not abandoned, as to be
likely, when used on or in connection with the goods of the applicant, to cause
confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1052(d). “[O]pposer has the
burden of proving a likelihood of confusion by a preponderance of the evidence.”
Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d 994, 2020 USPQ2d
10341, at *3 (Fed. Cir. 2020).
Our determination of the likelihood of confusion under Section 2(d) is based on an
analysis of all probative facts in the record that are relevant to the likelihood of
confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (“DuPont”). We consider each DuPont factor for which
there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Two key DuPont factors in every Section 2(d)
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case are the first two factors regarding the similarity or dissimilarity of the marks
and the goods or services, because the “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). We address these key factors, and others,
keeping in mind that “[n]ot all DuPont factors are relevant in each case, and the
weight afforded to each factor depends on the circumstances.” Stratus Networks, 2020
USPQ2d 10341, at *3 (citing In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1533 (Fed. Cir. 1997)).
A. Identity of Marks
Under the first DuPont factor, we determine the similarity or dissimilarity of the
marks in their entireties, taking into account their appearance, sound, connotation
and commercial impression. DuPont, 177 USPQ at 567; Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). “Similarity in any one of these elements may be sufficient to find the
marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014).
Here, Opposer has demonstrated prior common law rights in the mark TALIS,
which is identical to Applicant’s applied-for mark TALIS.
Applicant argues that “Opposer’s mark, as it appears in the marketplace, is
distinguishable from Applicant’s mark.”36 Specifically, it asserts that “the record
shows use of a stylized mark, which contains additional elements apart from the

36 34 TTABVUE 21.
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TALIS name … [and] Opposer’s Mark appears alongside a distinctive circular design
and the terms ‘CLINICAL LLC.’”37 For the reasons explained in Section III.B above,
Opposer’s TALIS mark, as displayed in the specimens, makes a commercial
impression separate and apart from the wording “CLINICAL LLC” and the design
element. Moreover, although Opposer’s prior use only depicts its mark in stylized
lettering, the marks remain legally identical because Applicant seeks registration of
its mark in standard characters. That is, registration of Applicant’s standard
character mark would mean rights to TALIS displayed in various font styles, colors
and sizes, including that used by Opposer. See In re Aquitaine Wine USA, LLC, 126
USPQ2d 1181, 1186 (TTAB 2018) (“[T]he rights associated with a standard character
mark reside in the wording per se and not in any particular font style, size, or color.”).
Because the marks are legally identical, the DuPont factor of the similarity of the
marks weighs strongly in favor of a finding of likelihood of confusion. See In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir.
1984) (“This factor weighs heavily against applicant, as the two word marks are
identical....”).
B. Alleged Weakness of TALIS
We turn now to the sixth DuPont factor, which “considers ‘[t]he number and
nature of similar marks in use on similar goods [or services].’” Omaha Steaks Int’l v.
Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018)
(quoting DuPont, 177 USPQ at 567)). “The purpose of introducing evidence of third-

37 Id.
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party use is ‘to show that customers have become so conditioned by a plethora of such
similar marks that customers have been educated to distinguish between different
[such] marks on the bases of minute distinctions.’” Id. (quoting Palm Bay Imps., 73
USPQ2d at 1694).
Applicant argues that “the number and nature of similar TALIS-formative marks
registered and used in connection with similar services militates against any
likelihood of confusion and indicates that the TALIS mark is relatively weak and
entitled to a narrow scope of protection.”38 In support, Applicant points specifically to
10 registrations owned by 7 different entities,39 accompanied by specimens showing
their use:
1. TALIS for “computer service, namely acting as an application service provider
in the field of knowledge management to host computer application software
for storing, publishing, visualizing, searching, retrieving and manipulating
information on web browsers, mobile devices and computer networks;
customized software application development services.”40

2. TALISPOINT (with and without a design element)41
and
TALISPOINT INSIGHT42
for “computer software for providing a search engine to locate service providers
and service provider information in a managed health care network.”43

38 34 TTABVUE 33.
39 Two registrations listed by Applicant (Reg. Nos. 4606655 and 4606654) for the marks TALI
PAYMENTS (with and without a design element), owned by the same entity, were cancelled
on April 23, 2021. Thus they are not given further consideration.
40 Reg. No. 4086738 issued on January 17, 2012.
41 Reg. Nos. 3869786 and 3918873, respectively; both issued on November 2, 2010 and on
February 15, 2011.
42 Reg. No. 4551316 issued on June 17, 2014.
43 Reg. Nos. 3869786 and 3918873, respectively; the former registration issued on November
2, 2010 and the latter on February 15, 2011.
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3. TALIX (with and without a design) for services that include “software as a
service (SaaS) services featuring software for use in automating the analysis
of patient data to facilitate coding of information related to patient care, and
for use in reviewing and analyzing health care patient data to optimize health
care planning and delivery of health care services.”44

4. TALI for chemicals used in research.45

5. TALI for educational and training services in the field of childhood
development, education, and cognitive disorders.46

6. TALI for “software as a service (SAAS) services featuring software for
collecting and tracking time, tasks, and other project-related data using cloud-
connected and voice-controlled, text-controlled, and chat-controlled
technologies; Software as a service (SAAS) services featuring software for
collecting, analyzing, and reporting business information and data used in
conjunction with cloud-connected and voice-controlled, text-controlled, and
chat-controlled technologies.”47

7. TALAS for “computer software for determining foot and ankle offset in a 3D
volume; computer software for determining the foot and ankle offset
component from scanned image data.”48

Nearly all of these registrations and evidence of their use, where provided, have
no probative value and do not help show weakness of the term TALIS in connection
with the involved software and services. At the outset, many of the marks can be
distinguished because they are visually and aurally different. More importantly, they
do not cover similar or related goods and services vis-à-vis those involved in this
opposition. Specifically, the TALI registrations, listed as numbers 4-6 above, cover
goods and services—i.e., chemicals for research, task and activity tracking software

44 Reg. Nos. 5026182 and 5026188, respectively; both issued on August 23, 2016.
45 Reg. No. 4050846 issued on November 1, 2011.
46 Reg. No. 6042820 issued on April 28, 2020.
47 Reg. No. 5710640 issued on March 26, 2019.
48 Reg. No. 5387281 issued on January 23, 2018.
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for businesses, and childhood educational services—that are completely unrelated.
The TALAS mark (number 7) is “a software algorithm developed . . . to automatically
calculate hindfoot alignment.”49 Thus while this software can be broadly described as
used in the medical field, its function is completely unrelated to Opposer’s software
and has no connection to Applicant’s services. Similarly, the TALISPOINT and
TALISPOINT INSIGHT marks (number 2) are for software offered to help manage a
medical network provider directory or database and updating the list of providers
within the network. As to the TALIS mark (number 1), the specimen of use submitted
with this registration indicates that the software helps manage informational
resources in the fields of teaching and learning, mostly at the university level, and
without an evident focus on or relationship to the medical field.
Only the TALIX marks (number 3) involve the use of medical patient data and,
thus, appear somewhat related to Opposer’s software. However, the specimens of use
Applicant submitted with these registrations indicate that the marks are used in
connection with software that assists “payers and healthcare providers . . . shift to
value-based care . . . [by] read[ing] structured and unstructured patient data to
extract accurate reimbursement codes, identify gaps in care, and analyze population
health trends.”50 Thus, there are some meaningful differences between the TALIX
software used by healthcare providers and payers to find a more cost-beneficial

49 30 TTABVUE 97 (Ex. 15).
50 Id. at 81 (Ex. 13).
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operation versus, as explained later in this decision, Opposer’s software that involves
patient data analysis for purposes of improving patient care.
In sum, the third-party registration and use evidence lacks probative value
because it involves unrelated or distinguishable goods and services and thus “has no
bearing on the strength of the term in the context relevant to this case.” See Tao
Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058 (TTAB 2017); In
re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (third-
party registrations for identical marks reciting unrelated goods not probative of
weakness of mark). To the extent that the TALIX registered marks involve patient
data driven software, these marks are too few to show weakness in the mark TALIS.
Cf. Juice Generation, Inc. v. GS Enters LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-
75 (Fed. Cir. 2015); Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v.
New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1135-36 (Fed. Cir.
2015).
Accordingly, the sixth DuPont factor remains neutral in our analysis.
C. Relatedness of the Parties’ Goods and Services
We now turn to the second DuPont likelihood of confusion factor focusing on the
comparison of Opposer’s software and Applicant’s services, as identified in the
involved application. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047,
1052 (Fed. Cir. 2018); Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Hous. Comput.
Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). It is well settled
that goods or services need not be identical or even competitive in nature to support
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a finding of likelihood of confusion. Instead, it is sufficient that the goods and services
are related in some manner or that the circumstances surrounding their marketing
are such that they would be likely to be encountered by the same persons in situations
that would give rise, because of the marks employed in connection therewith, to the
mistaken belief that they originate from or are in some way associated with the same
producer or provider. See Safety-Klean Corp. v. Dresser Indus., Inc., 518 F.2d 1399,
186 USPQ 476, 480 (CCPA 1975); Wet Seal, Inc. v. FD Mgmt., Inc., 82 USPQ2d 1629,
1639 (TTAB 2007); McDonald’s Corp. v. McKinley, 13 USPQ2d 1895, 1898 (TTAB
1989); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1469 (TTAB 1988), aff’d,
864 F.2d 149 (Fed. Cir. 1988).
When our likelihood of confusion analysis involves identical marks, as is the case
here, the degree of relatedness between the goods and services required to support a
finding of likelihood of confusion declines. In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1688-89 (Fed. Cir. 1993), citing Philip Morris Inc. v. K2 Corp., 555
F.2d 815, 194 USPQ 81, 82 (CCPA 1977) (“even when the goods or services are not
competitive or intrinsically related, the use of identical marks can lead to the
assumption that there is a common source”). See also, L’Oreal S.A. v. Marcon, 102
USPQ2d 1434, 1439 (TTAB 2012) cited in Mini Melts, Inc. v. Reckitt Benckiser LLC,
118 USPQ2d 1464, 1471 (TTAB 2016); In re Opus One Inc., 60 USPQ2d 1812, 1815
(TTAB 2001).
Opposer’s demonstrated prior use on software is described by Murphy as for use
in the medical field, namely, “advanced clinical guidance that interacts with the
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various patient care protocols, providing them with realtime results, realtime
monitoring of the performance of the practitioners, and analysis of the information
that comes in any form from any source of electronic records or manual entry of
records in the process of patient care.”51 The software is marketed to “[s]enior
management in the hospitals, the various heads of various patient care activity, such
as anesthesia or fusion, ECMO, the risk management organization” and Opposer also
“interact[s] with the blood banks, the laboratories, the infection control, [and] all
forms of support for the practitioners.”52
Applicant seeks registration of the TALIS mark for “medical analysis services in
the nature of analyzing clinical data for purposes of providing medical diagnostic
information and for guiding patient treatment for overall population health and
improved patient outcomes.” In determining the scope of this description of services,
we keep in mind that “[w]here the identification of services is broad, the Board
‘presume[s] that the services encompass all services of the type identified.”‘ In re
Country Oven, Inc., 2019 USPQ2d 443903, at *4 (TTAB 2020) (quoting Sw. Mgmt.,
Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015)). In re Thor Tech, Inc.,
90 USPQ2d 1634, 1638 (TTAB 2009) (identification must be construed to encompass
all services of the type described, which move in all normal trade channels, and are
available to all classes of purchasers).

51 27 TTABVUE 25-26 (Murphy dep. 21:23-22:5).
52 Id. at 26, (22:10-15).
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Giving Applicant’s services a full interpretation, as we must, we find that these
services and Opposer’s software may serve the same purpose. Specifically, both the
services and software assist medical personnel by providing them with information,
such as “realtime results” or “clinical data,” and an analysis of that information to
help improve patient care. Although Opposer’s prior use involves software used in the
fields of anesthesia and perfusion, Applicant’s services are not limited and thus may
include “analyzing [anesthesia or perfusion] clinical data . . . for guiding patient
treatment and improved patient outcomes.” Put differently, a consumer who provides
medical services for patients, e.g., a medical practice, hospital, etc., may retain
Applicant’s services or purchase Opposer’s software obtaining patient information
and analyses thereof, for the ultimate purpose of improving patient care.
Because Opposer’s software and Applicant’s services share the same purpose and
may serve the same function for the same class of consumers, they are very closely
related. This DuPont factor weighs in favor of a finding of likelihood of confusion.
D. Trade Channels
We turn next to the “similarity or dissimilarity of established, likely-to-continue
trade channels.” DuPont, 177 USPQ at 567.
Murphy testified that Opposer markets its software to “senior management in the
hospitals, the various heads of various patient care activity, such as anesthesia or
fusion, ECMO, the risk management organization. We interact with the blood banks,
the laboratories, the infection control, all forms of support for the practitioners.”53

53 27 TTABVUE 26 (Murphy dep. 22:10-15).
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Murphy also testified that they acquire customers by attending trade shows such as
“ASA for the anesthesiologists,” through brochures and references from existing
customers.54 Opposer, in its brief, notes that Applicant has not yet used its mark in
commerce and asserts that “a direct comparison [of trade channels] is impossible.”55
However, Opposer further argues that because there are no trade channel restrictions
in the involved application it is presumed that Applicant’s “medical analysis services
. . . [will] overlap with the trade channels in which Opposer’s goods and services for
medical software are offered for sale and sold.”56
In its brief, Applicant argues that “Opposer has failed to establish that Applicant’s
and Opposer’s respective goods and services travel or are likely to travel through
similar trade channels. This factor thus favors Applicant or, at best, is neutral.”57
However, Applicant also argues in its brief that although it does “not yet have any
customers for its goods or services, the record contains indications of the types of
customers that it expects to have. For instance, Applicant’s website identifies
patients, physicians, hospitals, and the health care system as groups that will be
served by or will use its products.”58 Thus, Applicant seems to acknowledge that it
will target some of the same classes of consumers, like hospitals and medical
practices, as those that Murphy testified are consumers of Opposer’s software.

54 Id. at 32-33, (28:14-29:2).
55 32 TTABVUE 18.
56 Id. at 18-19.
57 34 TTABVUE 26.
58 Id. at 27; referring to printouts from Applicant’s website that were submitted by Opposer
(14 TTABVUE 142-144, Murphy Ex. J).
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Given that Opposer’s software and Applicant’s services target some of the same
groups of consumers, and there are no trade channel restrictions in the involved
application, we find it extremely likely these goods and services would be found in
some of the same trade channels. To the extent they are, the similarity of trade
channels factor favors a likelihood of confusion. Otherwise, the factor remains
neutral.
E. Alleged Sophistication of Consumers
The fourth DuPont factor considers “[t]he conditions under which and buyers to
whom sales are made…” DuPont, 476 F.2d at 1361, 177 USPQ 567. In this regard,
Applicant, again, admits that it has not rendered its services in commerce but points
to printouts from its website and argues these help show that Applicant’s “customers
will likely include sophisticated healthcare professionals and healthcare
organizations.”59
Because Applicant has not begun selling its services, it is not really feasible to
compare the level of sophistication of the parties’ customers. Even assuming that the
parties’ share the same classes of consumers, such as hospitals and medical practices,
who may exercise more care in their purchasing decisions, these consumers may still
be confused as to source because the marks are identical and the goods and services
are so closely related. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ
49, 50 (Fed. Cir. 1986); Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434
F.2d 1403, 168 USPQ 110, 112 (CCPA 1970); see also, HRL Assoc., Inc. v. Weiss Assoc.,

59 Id.
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Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Assoc., Inc. v. HRL Assoc., Inc., 902
F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990).
Therefore, this factor favors neither party and is neutral.
F. Other Factors Argued Remain Neutral
Applicant makes additional arguments as to why it does not believe confusion
would be likely if the parties concurrently use their marks in commerce on the
involved goods and services. However, as discussed more fully below, these
arguments either lack the necessary evidentiary support or are simply not
persuasive.
Applicant argues that “Opposer’s admission that its mark is not famous is further
indication of Opposer’s de minimus sales, advertising, and length of use of the mark”
and this “factor thus favors Applicant.”60 We agree that, based on the record before
us, Opposer has not demonstrated that its TALIS mark is famous. However, the fifth
DuPont factor, which considers the “fame” or strength of the prior mark, DuPont, 177
USPQ at 567, and fame, if it exists, may only favor the prior user by conveying a
broader scope of protection to its mark. In other words, the lack of fame to Opposer’s
mark does not make a likelihood of confusion less likely. Accordingly, the fifth DuPont
factor remains neutral.
Applicant further contends that “Opposer concedes that it is not aware of any
actual confusion between its mark and Applicant’s Mark, and there is no evidence of

60 Id. at 30.
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any actual confusion in the record.”61 Applicant asserts that it “has been using the
TALIS mark in a public-facing manner to associate the mark with itself and its
forthcoming products for at least three years without any consumer confusion” and
that this “tend[s] to weigh in Applicant’s favor or [is] neutral, at best.”62 Applicant is
only correct to the extent that this factor is neutral. Because there has been no
meaningful opportunity for actual confusion,63 the lack thereof is irrelevant in the
analysis. See Nina Ricci S.A.R.L. v. E.T.F. Enters. Inc., 889 F.2d 1070, 12 USPQ2d
1901, 1903 (Fed. Cir. 1989) (“The absence of any showing of actual confusion is of very
little, if any, probative value” where evidence as to the use of Applicant’s merchandise
during the time in question was not presented).
As to the ninth DuPont factor, which takes into account the variety of goods or
services offered by Opposer, Applicant argues that “Opposer has not shown that it
uses the TALIS mark on a wide variety of goods” and this factor is therefore “neutral
or unfavorable for Opposer.”64 Again, whether Opposer makes use of the TALIS mark
on a variety of goods, other than software, is a determination that can only benefit,
not hurt, Opposer. DuPont, 177 USPQ at 567 (the “variety of goods on which a [prior]
mark is or is not used”). See also, In re Hitachi High-Techs. Corp., 109 USPQ2d 1769,

61 Id. at 34.
62 Id. at 35.
63 Applicant did not submit any evidence (see Note 19) to show the extent of use of its mark
“in a public-facing manner” for us to determine if there has been any meaningful opportunity
for confusion to occur. Again, “[a]ttorney argument is no substitute for evidence.” Zheng Cai,
127 USPQ2d 1799.
64 Id. at 36-37.
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1774 and n.11 (TTAB 2014) and In re Wilson, 57 USPQ2d 1863, 1867 (TTAB 2001)
(use on a wide variety of goods weighs in favor of likelihood of confusion). Thus,
although Opposer has not demonstrated prior use of TALIS on a wide variety of goods,
this factor remains neutral.
Finally, Applicant tries to argue that the tenth DuPont factor, involving any
“market interface between applicant and the owner of a prior mark,” DuPont, 177
USPQ at 567, is relevant because “Opposer did not oppose Applicant’s application for
the identical TALIS mark in Class 10 for ‘medical diagnostic apparatus and
instruments for detection, identification, and assessment of infectious diseases.’”65
Applicant contends that “Opposer’s lack of action with respect to another of
Applicant’s TALIS applications for related goods suggests that Opposer believes that
the marks are able to coexist in the marketplace.”66 Opposer rebuts this argument by
arguing that it “was not initially aware of Applicant” and that the “window for
opposition had closed on the earlier application by the time Opposer was aware of
Applicant [and the application].”67 Opposer’s explanation is a plausible one and we
find no basis for weighing the tenth DuPont factor in Applicant’s favor. The factor
remains neutral.

65 Id. at 37.
66 Id.
67 35 TTABVUE 17-18. Applicant introduced a copy of the notice of allowance that issued in
connection with the referenced application. 28 TTABVUE 127. There is no evidence that the
application has matured to registration such that Opposer has had an opportunity to file a
petition to cancel.
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G. Conclusion
Given that the marks are identical and Opposer’s software is closely related to
Applicant’s services, and that these goods and services may be offered to the same
classes of consumers in some of the same trade channels, confusion is likely. Indeed,
there are no factors weighing against or that may obviate the likelihood of confusion.
Decision: The opposition is sustained. 15 U.S.C. § 1052(d).