Health Payment Systems, Inc.

Trademark Trial and Appeal Board

Jun 18, 2020

86410322 (T.T.A.B. Jun. 18, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 18, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Health Payment Systems, Inc.
_____

Serial No. 86410322
_____

Joseph S. Heino and Erin E. Kaprelian of Davis & Kuelthau s.c.
for Health Payment Systems, Inc.
Andrew Rhim, Trademark Examining Attorney, Law Office 101,
Ronald Sussman, Managing Attorney.
_____

Before Kuhlke, Lykos and English,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Health Payment Systems, Inc. (“Applicant”) seeks to register on the Principal
Register the composite mark displayed below

(HEALTH PAYMENT SYSTEMS disclaimed) for “payment processing services in the
Serial No. 86410322
- 2 -
field of healthcare payments” in International Class 36.1
Registration was refused under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that Applicant’s applied-for mark so resembles the
registered standard character mark HPS on the Principal Register for
Financial services, namely, credit card, debit card, bank
card, smart card, prepaid card, stored value card, prepaid
cash card, bank-issued stored value card, bank-issued
prepaid cash card, stored value smart card, prepaid
payment card and smart phone and mobile device payment
accounts transaction processing services; credit card, debit
card, bank card, smart card, prepaid card, stored value
card, prepaid cash card, bank-issued stored value card,
bank-issued prepaid cash card, stored value smart card,
prepaid payment card and smart phone and mobile device
payment accounts verification services; check verification
and processing services; credit card, debit card, bank card,
smart card, prepaid card, stored value card, prepaid cash
card, bank-issued stored value card, bank-issued prepaid
cash card, stored value smart card, prepaid payment card
and smart phone and mobile device payment accounts
authorization services; electronic payment services
involving electronic processing and subsequent
transmission of bill payment data; providing electronic
processing of credit card, debit card, bank card, smart card,
prepaid card, stored value card, prepaid cash card, bank-
issued stored value card, bank-issued prepaid cash card,
stored value smart card, prepaid payment card and smart
phone and mobile device payment accounts transactions
via a proprietary and secure financial global computer
network; credit card, debit card, bank card, smart card,

1 Application Serial No.86410322, filed September 30, 2014, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b). The description of the mark is as follows: “The mark
consists of the letters ‘hps’ followed by a gray comma shaped figure and a black comma shaped
figure all over the words HEALTH PAYMENT SYSTEMS.” Color is not claimed as a feature
of the mark; the stippling is for shading purposes only. The application originally included
the additional services of “insurance claims processing for the healthcare industry” in
International Class 36. Applicant’s request to divide these services into a new “child”
application was approved on December 11, 2019.

Serial No. 86410322
- 3 -
prepaid card, stored value card, prepaid cash card, bank-
issued stored value card, bank-issued prepaid cash card,
stored value smart card and prepaid payment card account
services featuring a computer readable card; electronic
funds transfer services; payroll tax debiting services;
providing online financial services to restaurants and other
retail merchants, namely, providing financial account
management services and financial clearance services in
the nature of clearing and reconciling financial
transactions for restaurants and other retail
establishments; clearing and reconciling financial
transactions via a global computer network; providing
account transaction information to merchants, namely,
credit card, debit card, bank card, smart card, prepaid card,
stored value card, prepaid cash card, bank-issued stored
value card, bank-issued prepaid cash card, stored value
smart card, prepaid payment card and smart phone and
mobile device payment accounts transactions information
and balances via a secure Internet website; information,
advisory and consultancy services related to credit card,
debit card, bank card, smart card, prepaid card, stored
value card, prepaid cash card, bank-issued stored value
card, bank-issued prepaid cash card, stored value smart
card, prepaid payment card and smart phone and mobile
device payment accounts transaction processing services;
information, advisory and consultancy services related to
credit card, debit card, bank card, smart card, prepaid card,
stored value card, prepaid cash card, bank-issued stored
value card, bank-issued prepaid cash card, stored value
smart card, prepaid payment card and smart phone and
mobile device payment accounts transaction processing
practices for restaurants and other retail establishments;
financial transaction services, namely, providing secure
commercial transactions and payment options using a
mobile device at a point of sale; loyalty program payment
processing services; information services, namely, financial
information provided by electronic means in International
Class 36,2
that it is likely to cause confusion or mistake or to deceive.

2 Registration No. 4725291, registered April 21, 2015.
Serial No. 86410322
- 4 -
The appeal is fully briefed. We affirm.
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. DuPont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). See
also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). We must 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). When analyzing these factors, the overriding concerns are not
only to prevent buyer confusion as to the source of the services, but also to protect the
registrant from adverse commercial impact due to use of a similar mark by a
newcomer. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir.
1993). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the services. See In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“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.”). These DuPont factors, and the others raised by Applicant and/or the
Examining Attorney, are discussed below.
A. The Marks

This DuPont likelihood of confusion factor involves an analysis of the similarity or
Serial No. 86410322
- 5 -
dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005)
(citing DuPont, 177 USPQ at 567). “Similarity in any one of these elements may be
sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126
USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777 F. App’x (Fed. Cir. 2019) (citing In
re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). “The proper test is not a side-by-
side comparison of the marks, but instead ‘whether the marks are sufficiently similar
in terms of their commercial impression’ such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012).
Our analysis cannot be predicated on dissecting the marks into their various
components; that is, the decision must be based on a comparison of the entire marks,
not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212
USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected
and considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion.”).
Applicant directs our attention to the obvious visual differences, observing that
its mark is a composite mark consisting of stylized lettering as well as a design
element. Applicant deems it “inappropriate” to “focus exclusively on the similarity of
the acronyms ‘HPS’ (one hemmed in with using lower case letters) and give no weight
Serial No. 86410322
- 6 -
to the design element of the Applicant’s Mark which includes the addition of ‘two
comma-shaped figures of different shades’ to the ‘HPS’ acronym (again, in lower case
letters)” or the disclaimed wording HEALTH PAYMENT SYSTEMS. Applicant’s
Brief, p. 7; 9 TTABVUE 8.
Applicant’s position is unconvincing. In considering the marks, we agree with the
Examining Attorney’s assessment that the acronym “hps” in the applied-for mark is
dominant. “[T]here is nothing improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their entireties.” In re Nat’l Data,
224 USPQ at 751. See, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1533-34 (Fed. Cir. 1997). As discussed below, in making this finding, we note the
obvious differences in sight and sound. Consumers, however, do not focus on minutia
but rather overall impressions.
Consumers are likely to perceive Applicant’s composite mark as a variation of the
cited HPS mark. Both marks share this coined acronym. The only distinctions are the
addition of the disclaimed wording HEALTH PAYMENT SYSTEMS and design
elements to Applicant’s mark. At a minimum, the wording is merely descriptive if not
generic. Disclaimed matter generally is not source-indicating and does not constitute
the dominant part of a mark. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1846 (Fed. Cir. 2000) (quoting In re Nat’l Data Corp., 224 USPQ at
752); In re Dixie Rests. Inc., 41 USPQ2d at 1533-34; In re Code Consultants, Inc., 60
Serial No. 86410322
- 7 -
USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in
creating the mark’s commercial impression”).
In addition, with respect to Applicant’s mark, we find the stylized lettering and
design element subordinate to the literal acronym “hps.” It is an often-recited
principle that when a mark consists of a literal portion and a design portion, the
literal portion is usually more likely to be impressed upon a purchaser’s memory and
to be used in calling for the goods or services; therefore, the literal portion is normally
accorded greater weight in determining whether marks are confusingly similar. See,
e.g., In re Viterra, Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012);
In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999). See also CBS
Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983); In re Kysela Pere
et Fils, Ltd., 98 USPQ2d 1261, 1267-68 (TTAB 2011). We do not find In re Covalinski,
113 USPQ2d 1166 (TTAB 2014)3 which presented an exception to this rule, to be
relevant here. The involved mark in that case included design features that played a
much more prominent role than those of Applicant’s mark:

3 Applicant points to a case from the 5th Circuit Court of Appeals. In Board proceedings, on
the issue of design marks, Covalinski, is one of the seminal cases.
Serial No. 86410322
- 8 -
The Board, in finding the design to be the dominant element, provided the following
rationale:
Here, Applicant’s design mark includes the very large,
prominently displayed letters RR. The bodies of the Rs are
filled with a checkerboard pattern resembling a racing flag.
To each R an elongated horizontal “leg” of gradually
increasing thickness is appended, each of which ends in a
heart design. Inside the legs appear the rest of the letters
(i.e., the letter strings “edneck” and “acegirl”), in a form in
which the initial letters of each string are displayed in
relatively tiny typeface and subsequent letters are
displayed in increasing thickness. Together, these graphic
devices serve not only to draw attention to the RR letters
apart from the wording, but also make the letters that form
the “a-c-e” of the word “RACEGIRL” difficult to notice.
Since these goods are clothing, consumers would be likely
to encounter the mark in a retail setting on hang tags or
neck labels. In that context, the visual impression of the
mark is likely to be more important.
Id. at 1168. None of these reasons are present in this case. That is to say, the acronym
“hps” and term “health payment systems” in Applicant’s mark do not appear in
“relatively tiny typeface” in a letter string “difficult to notice.” To the contrary, the
font is large, bold, easy-to-read lettering.
We further note that the cited registered mark is in standard characters. A mark
in typed or standard characters may be displayed in any lettering style; the rights
reside in the wording or other literal element and not in any particular display or
rendition. Trademark Rule 2.52(a), 37 C.F.R. § 2.52(a). See Viterra, 101 USPQ2d at
1909; In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir.
2010). Thus, a mark presented in stylized lettering will not avoid likelihood of
confusion with a mark in typed or standard characters consisting of the same
lettering because the literal portion could be presented in the same manner of display.
Serial No. 86410322
- 9 -
See, e.g., Viterra, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 216
USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference
in type style is not viable where one party asserts rights in no particular display”).
Applicant contends that Registrant’s website
www.heartlandpaymentssystems.com is devoid of any service mark use of the
acronym “HPS.” See Applicant’s Response to Office Action dated November 19, 2018,
pp. 11-13. Applicant, pointing to the specimen of record for the cited registration,
contends that the phrase “Heartland A Global Payments Company” serves as
Registrant’s only brand identifier. See Applicant’s Response to Office Action dated
November 19, 2018, Exhibit A, p. 10. Applicant’s argument is misplaced. To the
extent Applicant is implying that Registrant is no longer using its mark in commerce,
such arguments constitute a collateral attack on an existing registration that can
only be considered in the context of a petition to cancel, not in an ex parte appeal. See
In re Dixie Rests., 41 USPQ2d at 1534-35; In re Peebles Inc., 23 USPQ2d 1795, 1797
n.5 (TTAB 1992). During ex parte examination, the marks are compared as they
appear on the drawing page of the application and registration certificate; the USPTO
does not consider how an applicant and registrant actually use their marks in the
marketplace. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018)
(citing In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1749 (Fed. Cir.
2017)).
Although we have pointed to the identical dominant portions of the marks, we
acknowledge the fundamental rule that the marks must be considered in their
Serial No. 86410322
- 10 -
entireties. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New
Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015).
Nevertheless, it is likely that consumers, when encountering Applicant’s mark, will
focus on the dominant literal portion, the acronym HPS, the sole element of
Registrant’s mark. The distinctions in each mark, namely the disclaimed wording,
stylized lettering and design element in Applicant’s mark are likely to be overlooked
when consumers consider the marks in their entireties.
In sum, we acknowledge the specific differences in appearance pointed out by
Applicant. These differences, however, are outweighed by the similarities of the
marks. Thus, when comparing the marks overall, they are similar in sound,
connotation and commercial impression. This DuPont factor weighs in favor of finding
a likelihood of confusion.
B. The Services
Next we compare the services as they are identified in the involved application
and cited registration. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d
1047, 1052 (Fed. Cir. 2018); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v.
Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Applicant acknowledges that the cited registration covers a large number of services
but requests that the Board focus on “providing online financial services to
restaurants and other retail merchants, namely, providing financial account
Serial No. 86410322
- 11 -
management services and financial clearance services in the nature of clearing and
reconciling financial transactions for restaurants and other retail establishments.” In
this regard, Applicant is misguided. The Examining Attorney need not prove, and we
need not find, similarity as to each service listed in the cited mark. It is sufficient for
a refusal based on likelihood of confusion that relatedness is established for any item
encompassed by the identification of services in a particular class. Tuxedo Monopoly,
Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re
Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (“it is sufficient for finding
a likelihood of confusion if relatedness is established for any item encompassed by
the identification of goods within a particular class in the application.”).
We agree, instead with the Examining Attorney’s focus on another service listed
in the cited registration: “electronic payment services involving electronic processing
and subsequent transmission of bill payment data.” This service, as identified, is
unrestricted as to any particular type or field. As such, it necessarily encompasses all
fields, including Applicant’s more specific “payment processing services in the field of
healthcare payments.” See In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134,
1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’
necessarily encompasses Registrant’s narrowly identified ‘residential and commercial
furniture.’”). See also Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719
F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013); Paula Payne Prods. Co. v.
Johnson Publ’g Co., Inc., 473 F.2d 901, 177 USPQ 76, 77-78 (CCPA 1973). Thus, based
Serial No. 86410322
- 12 -
on the identifications alone, Applicant’s and Registrant’s services are legally
identical.
We therefore find this DuPont factor supports a finding of a likelihood of
confusion.
C. Established, Likely-to-Continue Channels of Trade
Lastly, we consider the established, likely-to-continue channels of trade. As noted
above, because the services are in-part legally identical and unrestricted as to trade
channels, we must also presume that these particular services travel in the same
ordinary trade and distribution channels and will be marketed to the same potential
consumers. See Viterra, 101 USPQ2d at 1908 (even though there was no evidence
regarding channels of trade and classes of consumers, the Board was entitled to rely
on this legal presumption in determining likelihood of confusion); In re Yawata Iron
& Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally
identical goods, the channels of trade and classes of purchasers are considered to be
the same); American Lebanese Syrian Associated Charities Inc. v. Child Health
Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011). Because Registrant’s services
are not restricted to any field, we must assume that they are offered in all fields,
including healthcare.
Accordingly, we find this DuPont factor also favors a finding of likelihood of
confusion.
II. Balancing the Factors
We have carefully considered all of the evidence made of record, as well as all of
Serial No. 86410322
- 13 -
the arguments related thereto. The similarities of the marks coupled with the legally
identical nature of the services and presumed overlapping trade channels leads us to
the conclusion that prospective consumers are likely to confuse the source of the
involved services. In doing so, we have kept in mind the principle that where the
services are identical, less similarity between the marks is needed for us to find a
likelihood of confusion. See, e.g., Viterra, 101 USPQ2d at 1908; Century 21 Real Estate
Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)
(“When marks would appear on virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely confusion declines.”). This is not a
situation, as Applicant urges, where the marks are so different as to obviate a
likelihood of confusion. See, e.g., Kellogg Co. v. Pack’em Enters. Inc., 951 F.2d 330, 21
USPQ2d 1142 (Fed. Cir. 1991).
Decision: The Section 2(d) refusal is affirmed.