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`
`
`This Opinion is Not a
`Precedent of the TTAB
`
`Mailed: January 5, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`In re Merem Capital, LLC
`_____
`
`Serial No. 87817950
`_____
`
`Michael S. Denniston of Bradley Arant Boult Cummings LLP,
`for Merem Capital, LLC.
`
`Odette Martins, Trademark Examining Attorney, Law Office 123,
`Susan Hayash, Managing Attorney.
`
`_____
`
`
`Before Shaw, Larkin, and Dunn,
`Administrative Trademark Judges.
`
`
`Opinion by Larkin, Administrative Trademark Judge:
`
`Merem Capital, LLC (“Applicant”) seeks registration on the Principal Register of
`
`the mark shown below (URGENT CARE disclaimed)
`
`for services ultimately identified as “Medical services, namely, providing non-surgical
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`treatment of acute muscle, tendon, bone, joint and soft tissue injuries requiring
`
`
`
`

`

`Serial No. 87817950
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`immediate care on an outpatient basis from a walk-in clinic,” in International Class
`
`44.1
`
`The Trademark Examining Attorney refused registration of Applicant’s mark
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`under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that it
`
`so resembles the two registered marks show below, which are owned by different
`
`entities:
`
`
`
`for a “Comprehensive group of services in the field of orthopedics, namely, providing
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`post-operative rehabilitation services to patients and medical practitioners; providing
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`information to medical practitioners in the field of prescribing orthopedic products to
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`patients; rental of orthopedic products,” in International Class 44,2 and
`
`
`1 Application Serial No. 87817950 was filed on March 2, 2018 under Section 1(b) of the
`Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention
`to use the mark in commerce. Applicant describes its mark as consisting of “the design of a
`plus sign comprised of a horizontal and vertical rectangle. The middle of the vertical rectangle
`has two horizontal line spaces, one above and one below where it bisects the horizontal
`rectangle. Inside of the horizontal rectangle is a horizontal line. To the right of the design is
`the word ‘ORTHOEXPRESS’ above the words ‘URGENT CARE.’” Color is not claimed as a
`feature of the mark.
`
`2 The cited Registration No. 3339532 issued on November 20, 2007 and has been renewed.
`The registrant describes its mark as consisting of “the letter ‘R’ in the word ‘Ortho’ and the
`letter ‘X’ in the word ‘Xpress’ [which] are red. All other letters are black. There are red and
`black swirls above the words ‘Ortho" and ‘Xpress’.” The colors red and black are claimed as a
`feature of the mark and the registrant has disclaimed the exclusive right to the
`representation of the prescription symbol. The registration also covers services in Class 35
`that are not discussed by the Examining Attorney.
`
`
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`Serial No. 87817950
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`(ORTHO and BONE & JOINT CENTER disclaimed) for “Orthopaedic surgery
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`services,” in International Class 44,3 as to be likely, when used in connection with the
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`services identified in the application, to cause confusion, to cause mistake, or to
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`
`
`deceive.
`
`When the Examining Attorney made the refusal final, Applicant appealed and
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`requested reconsideration, which was denied. The appeal is fully briefed.4 We affirm
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`the refusal to register.
`
`I. Record on Appeal5
`
`The record on appeal includes the following:
`
` USPTO electronic records regarding the cited registrations, made of record
`
`by the Examining Attorney;6
`
`
`3 The cited Registration No. 5511950 issued on July 10, 2018. The registrant describes its
`mark as consisting of “‘ORTHO’ (in powder blue), ‘Xpress’ (in red), and ‘BONE & JOINT
`CENTER’ (in black).” The colors powder blue, red, and black are claimed as features of the
`mark.
`
`4 Citations in this opinion to the briefs refer to TTABVUE, the Board’s online docketing
`system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the
`number preceding TTABVUE corresponds to the docket entry number, and any numbers
`following TTABVUE refer to the page number(s) of the docket entry where the cited materials
`appear.
`
`5 Citations in this opinion to the application record, including the request for reconsideration
`and its denial, are to pages in the Trademark Status & Document Retrieval (“TSDR”)
`database of the United States Patent and Trademark Office (“USPTO”).
`
`6 June 21, 2018 Office Action at TSDR 2-4; February 19, 2019 Office Action at TSDR 2-7. The
`cited Registration No. 5511950 issued during prosecution of the application.
`
`
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`Serial No. 87817950
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` A dictionary definition of the term “urgent care,” and webpages regarding
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`the meaning of the term, made of record by the Examining Attorney;7
`
` Webpages listing “rehabilitation services” as a subset of “medical services,”
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`made of record by the Examining Attorney;8
`
` Webpages offered to show that walk-in medical clinics offer rehabilitation
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`services and/or orthopedic surgery services under the same mark, made of
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`record by the Examining Attorney;9
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` USPTO electronic records regarding third-party registrations offered to
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`show that medical services, rehabilitation services, and orthopedic surgery
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`services are offered under the same mark, made of record by the Examining
`
`Attorney;10 and
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` The declaration of Matthew Lemak (“Lemak Decl.”), Managing Member of
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`Applicant, and webpages of entities using marks containing the word
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`ORTHOEXPRESS or a phonetic equivalent, or similar wording, for
`
`orthopedic urgent care walk-in clinics, made of record by Applicant.11
`
`
`7 June 21, 2018 Office Action at TSDR 10-13.
`
`8 Id. at TSDR 7-9.
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`9 February 19, 2019 Office Action at TSDR 8-38; October 7, 2019 Final Office Action at TSDR
`2-56; May 5, 2020 Denial of Request for Reconsideration at TSDR 2-35.
`
`10 October 7, 2019 Final Office Action at TSDR 57-81.
`
`11 April 7, 2020 Request for Reconsideration at TSDR 10-37. We will cite the Lemak
`Declaration by paragraph and exhibit number (e.g., “Lemak Decl. ¶ 9”).
`
`
`
`- 4 -
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`

`

`Serial No. 87817950
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`II. Analysis of Refusal
`
`Section 2(d) of the Trademark Act prohibits registration of a mark that so
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`resembles a registered mark as to be likely, when used on or in connection with the
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`goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
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`§ 1052(d). Our determination of the likelihood of confusion under Section 2(d) is based
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`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,
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`177 USPQ 563, 567 (CCPA 1973) (“DuPont”). We consider each DuPont factor for
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`which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d
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`1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
`
`Two key DuPont factors in every Section 2(d) 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
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`marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
`
`24, 29 (CCPA 1976). Applicant discusses these two key factors, 10 TTABVUE 11-16,
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`22-26; 13 TTABVUE 7-11, as well as record evidence bearing on the sixth DuPont
`
`factor, the “number and nature of similar marks in use on similar [services].” DuPont,
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`177 USPQ at 567. 10 TTABVUE 16-22; 13 TTABVUE 4-7. Applicant also notes Mr.
`
`Lemak’s testimony regarding the absence of instances of actual confusion between
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`the involved marks, 10 TTABVUE 9, which implicates the eighth DuPont factor, the
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`
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`Serial No. 87817950
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`“length of time during and conditions under which there has been concurrent use
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`without evidence of actual confusion.” DuPont, 177 USPQ at 567.
`
`We will confine our DuPont analysis to the mark in cited Registration No. 3339532
`
`(the “’532 Registration”). If we find a likelihood of confusion as to that mark for any
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`of the services identified in the ’532 Registration, we need not reach the refusal based
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`on the second cited registration. In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1201-
`
`02 (TTAB 2009) (Board determined likelihood of confusion with respect to only one of
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`the two cited registrations). Conversely, if we do not find a likelihood of confusion as
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`to that mark and any of the services in the ’532 Registration, we would not find it as
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`to the other cited mark, which contains additional literal elements and covers
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`different services. In re St. Julian Wine Co., 2020 USPQ2d 10595, *3 (TTAB 2020)
`
`(citing In re Max Capital Grp., Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010)).
`
`A. Similarity or Dissimilarity of the Services and Channels of
`Trade
`
`The second DuPont factor “considers ‘[t]he similarity or dissimilarity and nature
`
`of the goods or services as described in an application or registration,” In re Detroit
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`Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir 2018) (quoting DuPont,
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`177 USPQ at 567), while the third DuPont factor considers “the similarity or
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`dissimilarity of established, likely-to-continue trade channels.’” Id. at 1052 (quoting
`
`DuPont, 177 USPQ at 567). See also Stone Lion Capital Partners, LP v. Lion Capital
`
`LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-63 (Fed. Cir. 2014). We begin with these
`
`DuPont factors.
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`
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`Serial No. 87817950
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`The services need not be identical, but “need only be related in some manner
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`and/or if the circumstances surrounding their marketing are such that they could
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`give rise to the mistaken belief that they emanate from the same source.” Coach
`
`Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed.
`
`Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
`
`“Evidence of relatedness may include news articles or evidence from computer
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`databases showing that the relevant goods and services are used together or used by
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`the same purchasers; advertisements showing that the relevant goods and services
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`are advertised together or sold by the same manufacturer or dealer; or copies of use-
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`based registrations of the same mark for both the applicant’s services and the
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`[services] listed in the cited registration.” In re Country Oven, Inc., 2019 USPQ2d
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`443903, *4-5 (TTAB 2019).
`
`Applicant correctly acknowledges that “[i]n an ex parte examination and appeal,
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`similarity of goods and services must be decided on the basis of the services recited
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`in the Application and the Cited Registrations.” 10 TTABVUE 22. The services
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`identified in the application as amended are “Medical services, namely, providing
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`non-surgical treatment of acute muscle, tendon, bone, joint and soft tissue injuries
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`requiring immediate care on an outpatient basis from a walk-in clinic,” while the
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`services identified in the ’532 Registration include “providing post-operative
`
`rehabilitation services to patients and medical practitioners.”12
`
`
`12 As noted above, the ’532 Registration covers other services. We consider them to be less
`pertinent for purposes of our analysis.
`
`
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`Serial No. 87817950
`
`Applicant “does not dispute that Applicant’s Mark and the Cited Registrations all
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`are used to identify services in the health care field relating to orthopedic care.” 13
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`TTABVUE 9. Applicant argues instead that “the services offered by the Applicant,
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`orthopedic urgent care services, are narrowly defined, and different from those
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`provided by the owners of the Cited Registrations,” 10 TTABVUE 22, because
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`“Applicant’s services are at one end of the orthopedic care continuum, with the . . .
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`ORTHOXPRESS post-operative rehabilitation services at the far end.” Id. Applicant
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`claims that the “evidence supports the conclusion that consumers recognize that
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`continuum, and distinguish marks on that basis.” Id. at 22-23.
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`Applicant also argues that the Examining Attorney “must show ‘something more’
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`than that similar marks are used for related services,” id. at 23, and that “the
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`evidence of record does not meet that standard,” because there is no evidence that
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`“Applicant specializes in the orthopedic surgery services or the post-operative
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`rehabilitation services offered under the Cited Registrations,” because “Applicant’s
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`description of services expressly does not encompass those services,” and because “the
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`services in the Cited Registrations expressly do not encompass Applicant’s services.”
`
`Id.
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`Applicant cites the Lemak Declaration in support of Applicant’s arguments that
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`the services are dissimilar. Mr. Lemak testified that Applicant fills “a gap in the field
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`for treatment of orthopedic injuries,” Lemak Decl. ¶ 5, specifically “providing non-
`
`surgical treatment of acute muscle, tendon, bone, joint and soft tissue injuries
`
`requiring immediate care on an outpatient basis from a walk-in clinic” rather than
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`
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`

`

`Serial No. 87817950
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`immediate surgery. Lemak Decl. ¶ 5. He further testified that with the exception of
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`general acute care or orthopedic hospitals, “most facilities dedicated to providing
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`orthopedic care do not provide urgent care from a walk-in clinic.” Lemak Decl. ¶ 5.
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`With respect to the services identified in the ’532 Registration, Mr. Lemak
`
`testified that “post-operative rehabilitation services typically are provided by a
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`rehabilitation hospital or orthopedic specialty clinic, not by a facility that operates an
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`urgent care walk-in clinic,” Lemak Decl. ¶ 6, that urgent care clinics are typically
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`staffed largely by non-physicians “operating under the supervision of a Medical
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`Doctor,” and that the “services provided by an urgent care walk-in clinic are not suited
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`for follow-up treatment and tracking of the patient at the surgical and post-surgical
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`stages, and typically, the urgent care walk-in clinic does not track those stages.”
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`Lemak Decl. ¶ 6. He criticizes the Examining Attorney’s evidence “that may tend to
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`show that ‘medical services,’ ‘rehabilitation services’ and ‘Orthopaedic surgery,’ are
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`of a kind that may emanate from a single source under a single mark,” Lemak Decl.
`
`¶ 7, because “while those services ‘may’ emanate from a single source under a single
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`mark, that is the exception rather than the rule.” Lemak Decl. ¶ 7.
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`Applicant argues that the majority of the third-party uses submitted by the
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`Examining Attorney “are for hospitals or hospital systems that provide general acute
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`care hospital services; that is, the wide cluster of medical and surgical services offered
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`by a hospital,” 10 TTABVUE 25, and that “the registrations cited by the Examining
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`Attorney all show use of those marks for the wide range of medical and surgical
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`inpatient hospital services.” Id. Applicant further argues that the “fact that large
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`
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`

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`Serial No. 87817950
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`orthopedic specialty clinics and general acute care hospitals provide the full range of
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`urgent care, surgery, and rehabilitation services under the same mark is not a
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`surprise,” but that “the Examining Attorney failed to take into account that general
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`acute care hospitals (which provide the full range of medical and surgical services)
`
`are the exception and not the rule for providers of specific orthopedic urgent care
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`services,” and that “[m]ore typically, even if urgent care clinics and orthopedic
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`surgical or rehabilitation centers have common ownership, the urgent care walk-in
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`clinic often is separately branded.” Id.
`
`With respect to the third DuPont factor, Applicant acknowledges that “the services
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`offered by Applicant and the owners of the Cited Registration [sic] are related,” but
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`argues that “the market uses the ORTHOEXPRESS designation to separately brand
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`the walk-in urgent care center” and that for “this reason the third factor in the
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`DuPont analysis (channels of trade) weighs more strongly in favor of Applicant.
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`Applicant offers its services to the same general market, medical services, but the
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`channels of distribution are markedly distinct.” Id. at 26.
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`The Examining Attorney responds that she “submitted internet evidence showing
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`that the same entity commonly provides walk in clinic medical services and
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`rehabilitation services and markets the services under the same mark.” 12
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`TTABVUE 12. She also cites “evidence from the USPTO’s X-Search database
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`consisting of a number of third-party marks registered for use in connection with the
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`same or similar services as those of both applicant and registrant in this case,” which
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`she claims “shows that the services listed therein, namely ‘medical services’,
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`
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`Serial No. 87817950
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`‘rehabilitation services’ and ‘Orthopaedic surgery’, are of a kind that may emanate
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`from a single source under a single mark.” Id. at 13. She lists eight such registrations.
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`Id. at 13-14. She argues that these third-party uses and registration trump the
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`Lemak Declaration. Id. at 17-18.
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`In its reply brief, Applicant argues that a substantial number of the Examining
`
`Attorney’s third-party uses “are not limited to orthopedic services, but are hospitals
`
`or systems that provided general acute care hospital services; that is, the wide cluster
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`of medical and surgical services offered by a hospital.” 13 TTABVUE 10. Applicant
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`concludes that “[b]ecause of the way the market for orthopedic urgent care services
`
`has developed . . . consumers are conditioned to distinguish between providers of
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`orthopedic urgent care services, orthopedic surgery services, and orthopedic
`
`rehabilitation services,” and “the second and third factors in the DuPont analysis
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`(similarity of services and channels of trade) weigh in favor of Applicant.” Id. at 10-
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`11.
`
`At the outset of our analysis, we must address Applicant’s argument under the
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`second DuPont factor that “[t]o establish likelihood of confusion the Examiner must
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`show ‘something more’ than that similar marks are used for related services.” 10
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`TTABVUE 23. As reflected in the authorities cited by Applicant in support of this
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`argument, id., the “something more” requirement originated in cases involving the
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`relatedness of restaurant services to foods or beverages and has been applied
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`primarily in such cases.13 See, e.g., Tao Licensing, LLC v. Bender Consulting Ltd., 125
`
`
`13 Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993) (beef,
`pork, and barbecue sauce and restaurant services); Jacobs v. Int’l Multifoods Corp., 668 F.2d
`
`
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`Serial No. 87817950
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`USPQ2d 1043, 1060-62 (TTAB 2017) (holding that “when comparing restaurant
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`services to alcoholic beverages, we must also follow our reviewing court’s holding that
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`‘the fact that restaurants serve food and beverages is not enough to render food and
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`beverages related to restaurant services for purposes of determining the likelihood of
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`confusion,” and that “‘to establish likelihood of confusion a party must show
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`something more than that similar or even identical marks are used for food products
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`and for restaurant services.’”) (quoting In re Coors Brewing Co., 343 F.3d 1340, 68
`
`USPQ2d 1059, 1063 (Fed. Cir. 2003)). The Federal Circuit has also held that the
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`“something more” requirement “has application whenever the relatedness of the
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`goods and services is not evident, well-known or generally recognized.” In re St.
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`Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1087 (Fed. Cir. 2014) (finding that
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`the record did not show that “health care services, namely, evaluating weight and
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`lifestyle health and implementing weight and lifestyle health improvement plans in
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`a hospital-based residential program” were related to “printed manuals, posters,
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`stickers, activity cards and educational worksheets dealing with physical activity and
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`physical fitness”).
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`There are no circumstances in this case that require the Examining Attorney to
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`“show ‘something more’ than that similar marks are used for related services,” as
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`Applicant claims, 10 TTABVUE 23, under the Federal Circuit’s decision in St. Helena
`
`
`1234, 212 USPQ 641 (CCPA 1982) (tea and restaurant services); In re Opus One Inc., 60
`USPQ2d 1812 (TTAB 2001) (wine and restaurant services); In re Golden Griddle Pancake
`House Ltd., 17 USPQ2d 1074 (TTAB 1990) (syrup and restaurant services); In re Mucky Duck
`Mustard Co., 6 USPQ2d 1467 (TTAB 1988) (mustard and restaurant services).
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`Serial No. 87817950
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`Hosp. This case does not involve the relatedness of goods to services, and because
`
`Applicant concedes that “the services offered by Applicant and the owners of the Cited
`
`Registration are related,” 10 TTABVUE 26 and that the involved marks “are used to
`
`identify services in the health care field relating to orthopedic care,” 13 TTABVUE 9,
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`the manner in which the identified services may be related is not “obscure, unknown,
`
`or generally unrecognized. . . .” Country Oven, 2019 USPQ2d 443903 at *13 (finding
`
`that “something more” requirement was inapplicable to issue of relatedness of retail
`
`bakery services and bread buns). Accordingly, the Examining Attorney need only
`
`show that the services are “related in some manner” or that “the circumstances
`
`surrounding their marketing are such that they could give rise to the mistaken belief
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`that they emanate from the same source.” Coach Servs., 101 USPQ2d at 1722.
`
`To make that showing, the Examining Attorney made of record multiple webpages
`
`showing that orthopedic walk-in clinic services and post-operative orthopedic
`
`rehabilitation services are frequently offered under by the same entity under the
`
`same mark. We summarize those pages below:
`
` The Crystal Clinic Orthopaedic Center offers “Crystal Clinic QuickCare,”
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`which gives “people with minor bone, muscle and joint injuries immediate
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`Serial No. 87817950
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`access to orthopedic care,”14 as well as orthopedic rehabilitation services,
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`including post-surgical physical therapy;15
`
` Cox Health operates an “Orthopedic & Sports Injury Walk-in Clinic,”16 and
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`also provides orthopedic rehabilitation services, including for patients
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`recovering from joint replacements;17
`
` Froedtert & Medical College of Wisconsin operates a “Walk-In Care for
`
`Sprains and Fractures” that offers “orthopaedic walk-in care that saves you
`
`time and money,”18 and also provides rehabilitation services “to help
`
`
`14 February 19, 2019 Office Action at TSDR 14. This clinic, and many of the ones whose
`webpages were made of record by Applicant, operate under both a house mark and a clinic-
`specific mark. See Amica Mutual Ins. Co. v. R. H. Converse Corp., 204 USPQ 155, 161 (TTAB
`1979) (“[A] house mark serves as an umbrella for all of the product marks and merchandise
`emanating from a single source.”). Mr. Lemak’s testimony that “if urgent care clinics and
`orthopedic surgical or rehabilitation centers have common ownership, the urgent care walk-
`in clinic is separately branded,” Lemak Decl. ¶ 7, thus appears to be accurate only as far as
`it goes, because it does not acknowledge the use of house marks as well. Applicant’s evidence
`shows that the several third-party “Ortho Express” clinics operate under the aegis of entities
`identified by their house marks. April 7, 2020 Request for Reconsideration at TSDR 15-16
`(Coastal Ortho Express), 17 (Alpha Orthopedics & Sport Medicine Ortho Express), 19
`(M.O.S.T. (Metro Orthopedics and Sports Therapy) Ortho Express), 20 (Prairie Orthopaedic
`Ortho Express Care), 21 (Total Ortho Express), 22 (Monument Health Ortho Express), 24
`(Precision Ortho Express), 25 (Ortho RI Express), 26 (Center for Orthopaedics
`OrthoExpress), 27 (Parkview Health Ortho Express), 28 (New England Orthopedic
`Specialists Ortho Express), 29 (Reconstructive Orthopedics Ortho Express), 30 (Orthopedic
`Associates of Dutchess County Orthoexpress), 31 (Winchester Orthopaedic Associates Ortho
`Express), 32 (Cleveland Clinic Ortho Express Care), 34 (Excelsior Orthopaedics Express), 35
`(ExpressOrtho at Chatham Orthopaedic Associates), 36 (OrthoCare Express, a service of
`Ortho Connecticut), and 37 (Orthopaedic Express by MOS (Muir Orthopaedic Specialists)).
`Such use of more than one mark in connection with the same services supports the
`relatedness of the respective services because they are offered under the umbrella of a house
`mark, which identifies a common source even though the clinics also bear separate clinic-
`specific marks.
`
`15 Id. at TSDR 16-17.
`
`16 Id. at TSDR 7-9.
`
`17 October 7, 2019 Final Office Action at TSDR 3.
`
`18 Id. at TSDR 16-17.
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`Serial No. 87817950
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`patients recover from all types of orthopaedic injuries, conditions, and
`
`surgeries;”19
`
` Rochester Regional Health operates a “Walk-in Care Center” that treats
`
`sprains, strains, and broken bones,20 and also provides an array of
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`orthopedic rehabilitation services “[w]hether you’re recovering from
`
`surgery, a sports injury or a spinal condition,” including “specialized post-
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`operative rehabilitation for patients of all ages who are recovering from
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`surgery related to sports-related injuries;”21
`
` Summit Orthopedics operates an “OrthoQUICK Walk-in Clinic” for bone
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`and joint injuries,22 and also provides “[i]nnovative post-surgical care” as
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`part of the “post-surgical rehabilitation process;”23
`
` Front Range Orthopedics & Spine operates a “Walk-In Orthopedic Clinic”
`
`that provides patients “with an alternative to the emergency room or
`
`general urgent care facilities,”24 and also provides “physical therapy and
`
`rehabilitation to assist our patients in regaining full strength and mobility
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`so they can get back to enjoying life,” including those who “[r]ecently had
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`19 Id. at TSDR 14.
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`20 Id. at TSDR 34-35.
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`21 Id. at TSDR 31-33.
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`22 Id. at TSDR 43-46.
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`23 Id. at TSDR 40-41.
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`24 Id. at TSDR 55.
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`Serial No. 87817950
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`orthopedic surgery, such as hip surgery, knee surgery, shoulder surgery or
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`total joint replacement;”25
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` Rothman Orthopedics operates “two walk-in orthopedic-only urgent care
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`clinics,”26 and also provides orthopedic rehabilitation services;27
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` Ortho Georgia operates an “Orthopaedic Urgent Care Center” “for WALK-
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`IN orthopaedic patients that require an
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`immediate orthopaedic
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`evaluation,”28 and also provides rehabilitation services that “work closely
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`with physicians and surgeons to create individual programs to safely and
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`quickly allow our patients to achieve their highest functioning levels;”29 and
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` OSS Health offers “Orthopaedic Urgent Care” where “Walk-ins are always
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`welcome!,”30 as well as “Orthopaedic Rehabilitation” to “reach your
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`maximum recovery following an orthopaedic injury or surgery.”31
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`As noted above, many of Applicant’s third-party uses of “Ortho Express” for
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`orthopedic walk-in or urgent care clinics similarly appear to involve the use of a house
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`mark for those services as well as for other orthopedic services. Examples include:
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` Coastal Orthopaedics, PC, a group of orthopedic medicine physicians “with
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`unique specialties in spine, pediatrics, foot and ankle, sports medicine,
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`25 Id. at TSDR 52-53.
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`26 May 5, 2020 Denial of Request for Reconsideration at TSDR 2.
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`27 Id. at TSDR 5-20.
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`28 Id. at TSDR 21-25.
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`29 Id. at TSDR 26.
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`30 Id. at TSDR 31-32.
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`31 Id. at TSDR 33.
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`Serial No. 87817950
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`shoulder, hand and upper extremity, and total joint replacement surgery,”
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`which announced the opening of “Coastal Ortho Express,” which “will offer
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`walk-in urgent care for orthopaedic issues;”32
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` Alpha Orthopedics & Sports Medicine, which operates an “Ortho Express”
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`walk-in injury clinic at one of its existing locations that is designed “for a
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`full array of services matching those of our full-time clinic;”33
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` Metro Orthopedics and Sports Therapy (MOST), which offers orthopedics
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`and sports therapy services as well as physical therapy and orthopedic
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`surgery services, and which announced that an “Ortho Express” webpage
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`would be “Coming Soon;”34
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` An “OrthoExpress” urgent-care clinic that “is a division of Cedar Valley
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`Medical Specialists;”35
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` Ortho Rhode Island, which operates an “Ortho RI Express” at one of its
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`office locations, and whose website contains links to “Orthopedic
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`Specialties” and “Therapies Provided;”36
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` Parkview Health, which operates a “Parkview Ortho Express” walk-in
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`clinic as well as an orthopedic hospital;37
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`32 April 7, 2020 Request for Reconsideration at TSDR 16.
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`33 Id. at TSDR 17.
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`34 Id. at TSDR 19.
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`35 Id. at TSDR 23.
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`36 Id. at TSDR 25.
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`37 Id. at TSDR 27.
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`Serial No. 87817950
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` An “OrthoExpress” clinic that is a “Division of Reconstructive Orthopedics,”
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`which also offers physical therapy and occupational therapy services;38
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` An “Ortho Express” clinic, which operated by Winchester Orthopaedic
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`Associates, which also offers physical therapy services;39 and
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` An “Ortho Express Care” clinic operated by the well-known Cleveland
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`Clinic.40
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`These uses suggest that urgent care orthopedic clinics of the sort operated by
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`Applicant are frequently extensions of the array of services, including rehabilitation
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`services, offered by orthopedic medicine practices of various sorts.
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`The Examining Attorney also made of record eight third-party, use-based
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`registrations of marks for both “medical services” or “urgent medical care services,”
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`on the one hand, and “physical rehabilitation” services, on the other hand. 12
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`TTABVUE 13-14.41 In determining the scope of an applicant’s or registrant’s
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`identification of services, “[w]here the identification of services is broad, the Board
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`‘presume[s] that the services encompass all services of the type identified.’” Country
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`Oven, 2019 USPQ2d 443903 at *4 (quoting Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115
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`USPQ2d 1007, 1025 (TTAB 2015)). The same principle applies in determining the
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`scope of a third-party registrant’s identification of services. “Just as we must consider
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`the full scope of the . . . services as set forth in the application and registration under
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`38 Id. at TSDR 29.
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`39 Id. at TSDR 31.
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`40 Id. at TSDR 32.
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`41 October 7, 2019 Final Office Action at TSDR 57-81.
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`Serial No. 87817950
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`consideration, we must consider the full scope of the . . . services described in a third-
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`party registration.” Id. at *9. “Because the benefits of registration are commensurate
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`with the scope of the [services] specified in the certificate of registration, a [third-
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`party] registration that describes [services] broadly is presumed to encompass all . . .
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`services of the type described.” Id.
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`Accordingly, we must construe the broadly-described “medical services” in the
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`third-party registrations to encompass Applicant’s narrower services of “providing
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`non-surgical treatment of acute muscle, tendon, bone, joint and soft tissue injuries
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`requiring immediate care on an outpatient basis from a walk-in clinic.” Applicant
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`itself did so when it amended its original identification of services, “medical services”
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`alone,42 to “Medical services, namely, providing non-surgical treatment of acute
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`muscle, tendon, bone, joint and soft tissue injuries requiring immediate care on an
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`outpatient basis from a walk-in clinic” through an amendment that expressly
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`describes those narrower services as a subset of the broader “medical services.”
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`Moreover, in view of the use evidence summarized above, which shows that
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`physical therapy and other rehabilitation services are often provided to patients
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`recovering from surgery, we must similarly construe the broadly-identified “physical
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`rehabilitation” services in the third-party registrations to encompass the narrower
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`“post-operative rehabilitation services” identified in the ’532 Registration.
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`42 March 2, 2018 Application at TSDR 1.
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`Construing the identifications of services in the third-party registrations in t