TTABlog Test: Is MAIN LINE REFRESH Confusable With MAIN LINE HEALTH or MAIN LINE PLASTIC SURGERY?

The USPTO refused registration of the mark MAIN LINE REFRESH (standard characters) for “Medical consultations; Medical services; Cosmetic and plastic surgery” [MAIN LINE disclaimed], finding it likely to cause confusion with the registered mark MAIN LINE HEALTH (in standard characters and in the design form shown below, with HEALTH disclaimed) for, inter alia, medical services, and the registered mark MAIN LINE PLASTIC SURGERY & Design for cosmetic and plastic surgery services. The involved services are, in part, identical and so the Board presumed that they travel in the same trade channels to the same classes of consumers. But what about the marks? How do you think this came out? In re Morgenstern Center for Orbital and Facial Plastic Surgery Inc., Serial No. 87267085 (July 2, 2019)[not precedential] (Opinion by Judge Frances Wolfson).

Since the services overlap, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. The Board observed that the appearance of "MAIN LINE" as the leading
element in all of the marks "lends prominence to the wording and heightens the likelihood of confusion." The Board also found that "MAIN LINE" is the dominant term in the cited marks, since "HEALTH" and "PLASTIC SURGERY" are generic for or merely descriptive of the services, and since the literal portion of the marks is the part that consumers are likely to recall and to use in calling for the services. The phrase "MAIN LINE" dominates the word+design marks and the designs themselves are unpronounceable.

Applicant contended that "Main Line" is geographically descriptive and the marks are distinguishable by the remaining portions of each mark. The examining attorney provided evidence showing that "Main Line" is a generally known location in Wayne, Pennsylvania (the western suburbs of Pennsylvania). Applicant and the registrants all list their locations as Bryn Mawr, Pennsylvania, which is within the Main Line region.

Applicant submitted Yellow Page listings for some 110 medical clinics, physicians, and surgeons that use "Main Line" in their trade names.

Although telephone directory listings of names, addresses and phone numbers by themselves are insufficient to establish actual use, here the entries tell us a little about the nature of each business, and some include consumer reviews. Thus, the listings have probative value in illustrating that “Main Line” is a term widely used in connection with cosmetic and plastic surgery and related medical  services.

In light of this widespread use of the term “Main Line” in connection with medical services, the Board found the term to be weak when used in connection with medical services, and it therefore concluded that the involved marks are distinguishable based on the additional elements in each.

[A]lthough the literal elements in the marks (HEALTH and PLASTIC SURGERY) are themselves quite weak, two of the cited marks combine an arbitrary or suggestive design feature with the wording to create unique marks that are more dissimilar than similar to Applicant’s mark MAIN LINE REFRESH. As to the cited word mark MAIN LINE HEALTH, it too is distinguishable as a whole from Applicant’s mark on the basis of the differing terms “HEALTH” and “REFRESH,” resulting in different overall commercial impressions.

The Board also noted that the cited registrations have co-existed with each other, and therefore the owners thereof "appear to believe that confusion is not likely."

And so the Board reversed the refusal.


Read comments and post your comment here.

TTABlog comment: Do you think every Philadelphian got this right?

Text Copyright John L. Welch 2019.