WebMD LLCv.WearMD, Inc.

Trademark Trial and Appeal Board

Feb 24, 2016

No. 91216701 (T.T.A.B. Feb. 24, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 24, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
WebMD LLC
v.
WearMD, Inc.
_____

Opposition No. 91216701
to Application Serial No. 86033200
_____

Barbara A. Barakat, Michael J. Bevilacqua, and Martin E. Gilmore of Wilmer
Cutler Pickering Hale and Dorr L.L.P. for WebMD LLC

William E. Godwin, Esq. for WearMD, Inc.
_____
Before Kuhlke, Lykos and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

WearMD, Inc. (“Applicant” or “WearMD”) seeks registration on the Principal
Register of the mark WearMD (in standard characters) for “Medical services and
preventive healthcare services provided via telecommunication and global computer
networks to monitor and provide medical care to individuals through the use of
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wearable medical devices and other consumer health care monitoring products” in
International Class 44 (“Application”).1 WebMD LLC (“Opposer” or “WebMD”)
opposes the application based on likelihood of confusion under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). In the notice of opposition, Opposer pleaded
ownership of the following registered marks:
WEBMD (in typed form)2 for “computer services, namely, providing medical
information by way of a World Wide Web page accessible via global computer
network” in International Class 42.3

WEBMD (in typed form) for “On-line computer services- namely, providing on-
line medical information and on-line medical journals and medical reference
databases to consumers, providers, administrators and other participants in
the healthcare industry, hosting the web sites of others on a computer server
for a global computer network, and providing general information to
consumers, providers, administrators and other participants in the health care
industry via an on-line computer network in the fields of fitness, nutrition,
dieting, wellness, and sexuality” in International Class 42.4

WEBMD (in standard characters) for “Licensing computer software for use in
analyzing the performance of and quality of care provided by hospitals, and
aiding consumers to compare and select hospitals; health care utilization and
review services” in International Class 35; “Providing multiple-use access to a
global computer information network in the field of health care” in
International Class 38; “Providing health information and analysis in the
nature of the performance of and quality of care provided by hospitals via a
global computer network; computer software development; maintenance of
computer software for others; providing temporary use of on-line non-

1 Application No. 86033200, filed on August 9, 2013, under Section 1(a) of the Trademark Act,
15 U.S.C. § 1051(a), based on an allegation of first use on June 1, 2013 and first use in
commerce on August 1, 2013.
2 “Prior to November 2, 2003, ‘standard character’ drawings were known as ‘typed’
drawings…. A typed mark is the legal equivalent of a standard character mark.” TMEP
§ 807.03(i) (Oct. 2015).

3 Reg. No. 2349285, filed January 16, 1998, issued May 16, 2000, claiming January 7, 1998
as the date of first use in commerce; renewed.
4 Reg. No. 2394818, filed December 7, 1998, issued October 17, 2000, claiming March 31, 1998
as the date of first use in commerce; renewed.
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downloadable software for health risk assessment and profiling for use in the
field of preventative health” in International Class 42; “Consulting and
counseling services in the field of preventative health care, namely,
establishing health risk assessment profiles to identify personal and group
health risks, personal and group health risk counseling, health risk
intervention, health promotion, health risk and behavior modification, and
preventative medical assessment and screening” in International Class 44.5

WEBMD HEALTH MANAGER (HEALTH MANAGER disclaimed) (in
standard characters) for “On-line services, namely, maintaining secure records
concerning the health conditions of individuals and families; providing a
database featuring information in the fields of health and healthcare, namely
a database that features a calendar and records of interactive discussions and
events in the fields of health and healthcare; providing an on-line database of
health professionals and medical treatment centers available to the public;
providing an interactive computer database in the field of medical diagnostics;
providing medical and pharmaceutical information services via an online
database of reference materials; telephone information services in the field of
healthcare, namely providing news and information concerning healthcare-
related topics via telephone lines to subscribers such as physicians and other
healthcare professionals; providing information via the Internet in the field of
healthcare, namely providing news and information concerning healthcare-
related topics to subscribers such as physicians and other healthcare
professionals; and providing news regarding medical and health related events
via the Internet” in International Class 44.6

In its answer, Applicant denies the salient allegations in the notice of opposition,
alleging no likely confusion.7

5 Reg. No. 3477973, filed April 29, 2005, issued July 29, 2008, claiming March 31, 1998 as the
date of first use in commerce in connection with “Providing multiple-use access to a global
computer information network in the field of health care,” and January 31, 2003 as the date
of first use in commerce for the remaining services; Sections 8 and 15 combined declaration
accepted and acknowledged.
6 Reg. No. 3128335, filed November 21, 2003, issued August 15, 2006, claiming October 14,
2003 as the date of first use in commerce; Sections 8 and 15 combined declaration accepted
and acknowledged.
7 4 TTABVUE.
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I. Evidentiary Record

The record consists of:
• the pleadings;
• pursuant to Trademark Rule 2.122(b), the file of the opposed Application
Serial No. 86033200;
• Exhibits 1-4 from Opposer’s First Notice of Reliance, 8 TTABVUE, consisting
of copies of the pleaded registrations showing status and title;
• Exhibits 5-7 from Opposer’s Second Notice of Reliance,8 9 TTABVUE,
consisting of excerpts from Applicant’s discovery responses;
• Exhibits 8-24 from Opposer’s Third Notice of Reliance, 10 TTABVUE,
consisting of various printed articles about WebMD, WebMD webpage
excerpts, and iTunes App Store webpages offering various WebMD apps for
download;

8 Pursuant to Rule 2.122(j)(3), 37 C.F.R. § 2.120(j)(3), a party that has received documents
produced by another party in response to a request for production of documents may not
make such documents of record by notice of reliance alone, except to the extent that they are
admissible by notice of reliance under Trademark Rule 2.122(e), 37 C.F.R. § 2.122(e).
However, “[d]ocuments obtained through disclosure or by request for production of
documents under Fed. R. Civ. P. 34, and improperly offered in evidence, may nevertheless be
considered by the Board if the nonoffering party (parties) does not object thereto; and/or
treats the documents as being of record; and/or in the same manner improperly offers
documents which it obtained under Fed. R. Civ. P. 34.” TBMP § 704.11(8) & n.6. With regard
to Exhibits 6 and 7 of Opposer’s Second Notice of Reliance, as well as Exhibit 2 of Applicant’s
Notice of Reliance, we note the lack of objection to these produced documents, and that each
party submitted documents received from the other in response to document requests.
Therefore, we will treat them as having been stipulated into evidence. See Jeanne-Marc, Inc.
v. Cluett, Peabody & Co., Inc., 221 USPQ 58, 59 n.4 (TTAB 1984); Southwire Company v.
Kaiser Aluminum & Chemical Corporation, 196 USPQ 566, 568 n.1 (TTAB 1977).

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• Exhibits 1-2 from Applicant’s Notice of Reliance, 12 TTABVUE, consisting of
excerpts from Opposer’s discovery responses;
• Exhibits 3-6 from Applicant’s Second Notice of Reliance, 12 TTABVUE,
consisting of various printed publications and webpage excerpts.
• the testimony deposition of Steven Zatz, M.D., President of Opposer, and its
accompanying exhibits, 11 TTABVUE; and
• the testimony deposition of Joshua Stein, Opposer’s Vice-President of Sales
within the Health Services Division, 11 TTABVUE.
Neither party lodged evidentiary objections.
II. Standing and Priority
Opposer must prove standing by showing a real interest in the outcome of the
proceeding and a reasonable basis for believing that it would suffer damage if the
mark is registered. See 15 U.S.C. § 1063; Ritchie v. Simpson, 170 F.3d 1092,
50 USPQ2d 1023, 1026 (Fed. Cir. 1999). Opposer’s pleaded registrations showing
current status and title set forth above and made of record through its First Notice of
Reliance establish its standing.9 See Coach Serv. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713, 1727-28 (Fed. Cir. 2012).
Opposer’s pleaded registrations further establish that Section 2(d) priority is not
an issue in this case as to the marks and the services covered by these registrations.
See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110

9 8 TTABVUE.
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(CCPA 1974); Miss Universe L.P. v. Cmty. Mktg. Inc., 82 USPQ2d 1562, 1566 (TTAB
2007). Applicant does not contest Opposer’s priority.
III. Applicable Law

The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). A
likelihood of confusion analysis often focuses primarily on the similarities between
the marks and the similarities between the goods and services. See 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.”). With
respect to the marks, we must compare them “in their entireties as to appearance,
sound, connotation and commercial impression.” Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). As to the services, we must
determine whether their degree of relatedness rises to such a level that consumers
would mistakenly believe the parties’ services emanate from the same source. The
comparison of services must be assessed as they are identified in the Application and
Opposer’s registrations. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston
Computers Serv. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
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IV. Likelihood of Confusion

Opposer bears the burden of proving its claim of likelihood of confusion by a
preponderance of the evidence. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1848 (Fed. Cir. 2000).
Background
As background to aid in understanding some of the evidentiary references to
“portals” in connection with Opposer’s services, WebMD divides its business into
public and private portal services.10 The public portal services involve providing
medical and health information, as well as downloadable apps and software that
provide health-related monitoring.11 Consumers may access the public portal services
through Opposer’s website, free of charge.12 The private services include a private
portal for health care professionals that also provides medical information, but goes
further to offer health risk assessment and profiling tools.13 Opposer provides other
private services in conjunction with health plans, large employer groups, and
government entities, and these services include “a behavior change platform or
portal, … telephonic health coaching, on-site coaching, digital coaching [and] … a
broad spectrum of decision support tools and resources.”14
Fame of Opposer’s WebMD Mark

10 12 TTABVUE at 7-9 (Opposer’s Interrogatory Answers, introduced by Applicant).
11 Id. at 7.
12 Id. at 12.
13 Id. at 8.
14 11 TTABVUE at 65-70 (Stein testimony).
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As an initial matter, we consider Opposer’s assertion that its WebMD mark merits
famous mark status. A famous mark, reflecting extensive public recognition and
renown, enjoys a broad scope of protection. Bose Corp. v. QSC Audio Prod. Inc., 293
F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214
F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000). Because of this wide latitude of
legal protection and the important role fame may play in the likelihood of confusion
analysis, a party asserting fame must clearly prove it. Harry Winston, Inc. v. Bruce
Winston Gem Corp., 111 USPQ2d 1419, 1437-38 (TTAB 2014); Leading Jewelers
Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007). Fame for
likelihood of confusion purposes exists when a “significant portion of the relevant
consuming public ... recognizes the mark as a source indicator.” Palm Bay Imports,
73 USPQ2d at 1694. Fame may be measured indirectly by the volume of sales and
advertising expenditures of the goods sold under the mark, and other factors such as
length of time of use of the mark; widespread critical assessments; notice by
independent sources of the products identified by the marks; and the general
reputation of the products and services. Weider Publ’ns, LLC v. D & D Beauty Care
Co., 109 USPQ2d 1347, 1354 (TTAB 2014); see also Bose Corp., 63 USPQ2d at 1308.
In support of its assertion that its mark should be considered famous, Opposer
points to length of use, promotion, customer base, lack of evidence of others using
WebMD as a mark for related goods or services, and certain awards Opposer has won.
Specifically, Opposer points to almost 20 years of use.15 As noted above, several of the

15 11 TTABVUE at 7 (Zatz testimony).
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pleaded WebMD registrations date back 18 years. Dr. Zatz testified that WebMD
earned over $500 million in revenue in 2014, spent $4 million in direct marketing,
and spent another $16 million on the WebMD magazine, which Opposer characterizes
as a “marketing vehicle.”16 Opposer presents an impressive customer base. According
to Mr. Stein, “we have over 70 million unique individuals hitting the public portal
site every month.”17 As further evidence of consumer exposure, Mr. Stein testified
that “Walgreen’s is leveraging the WebMD brand and leveraging our digital coaching
programs…. And they are integrating components of that into their consumer-
directed marketing campaigns and are tying that also into their Balance Reward
Loyalty Program that they have, which I believe covers over 80 million end users in
the United States.”18 Regarding awards, Opposer’s corporate officers testified that
WebMD won several “Webby Awards,” which recognize Internet services and
companies, and received recognition from Millward Brown, naming WebMD “the No.
1 most-trusted brand four years in a row.”19 Although initially describing Millward
Brown as independent, Dr. Zatz later acknowledged that WebMD provides funding
to Millward Brown to facilitate the “study” resulting in at least some of these awards,
though he testified that WebMD did not do so at the time of the first award and that
WebMD does not influence the content or outcome of the studies.20

16 Id. at 29-30 (Zatz testimony); see also 12 TTABVUE at 15-16 (Opposer’s Interrogatory
Answer, introduced by Applicant, setting forth advertising expenditures).
17 11 TTABVUE at 82 (Stein testimony).
18 Id. at 75-76 (Stein testimony).
19 Id. at 82 (Stein testimony), 23-24 (Zatz testimony).
20 Id. at 40-41 (Zatz testimony).
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Opposer’s 70 million users of its WebMD public portal per month, and its joint
venture with Walgreen’s, by which the WebMD mark reaches its 80 million end users,
show widespread consumer exposure to the mark and suggest widespread recognition
of it. See Weider Publ’ns, 109 USPQ2d at 1354 (crediting fame-related evidence that
millions of consumers per month were exposed online to the mark in question).
Opposer’s length of use and revenue figures from its WebMD services also support
finding fame. Regarding the awards, while we take into account Opposer’s financial
support to Millward Brown in our assessment of the probative value of the “most-
trusted brand” designations, nonetheless that recognition and the Webby Awards
won by WebMD point to the type of favorable critical assessment and positive general
reputation indicative of fame. See Bose Cor., 63 USPQ2d at 1309. In total, the record
contains the requisite clear evidence, and Opposer’s WebMD mark appears to have
achieved fame in connection with the services identified in the Registrations.
Applicant even concedes, “Opposer’s mark is strong with respect to the services it
provides,”21 but Applicant asserts that such strength should not be attributed to
WebMD in relation to medical services.22 While we find fame only in connection with
the services identified in the Registrations, in response to Applicant’s argument, we
note that our primary reviewing court has cautioned against unduly limiting the
weight accorded fame as follows:
We think that the Board’s rule -- that the fame of the FRITO-LAY marks extends
no further than the products with which the marks are currently used--undercuts
the legal standard of protection for famous marks…. ‘The fame of a trademark

21 16 TTABVUE at 11 (Applicant’s brief).
22 Id. at 12 (Applicant’s Brief).
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may affect the likelihood purchasers will be confused inasmuch as less care may
be taken in purchasing a product under a famous name.’ [citations omitted] This
reasoning applies with equal force when evaluating the likelihood of confusion
between marks that are used with goods that are not closely related, because the
fame of a mark may also affect the likelihood that consumers will be confused
when purchasing these products.

Recot, Inc., 54 USPQ2d at 1897.
Relatedness of the Services
Turning to the services, among the services identified in Opposer’s registrations,
we find the closest to the medical services and preventive healthcare services in the
Application to be the following:
[C]omputer services, namely, providing medical information by way of a World Wide
Web page accessible via global computer network;23

On-line computer services- namely, providing on-line medical information and on-line
medical journals and medical reference databases to consumers, … and providing
general information to consumers, providers, administrators and other participants
in the health care industry via an on-line computer network in the fields of fitness,
nutrition, dieting, wellness, and sexuality;24

[P]roviding temporary use of on-line non-downloadable software for health risk
assessment and profiling for use in the field of preventative health; Consulting and
counseling services in the field of preventative health care, namely, establishing
health risk assessment profiles to identify personal and group health risks, personal
and group health risk counseling, health risk intervention, health promotion, health
risk and behavior modification, and preventative medical assessment and
screening;25

and

On-line services, namely, maintaining secure records concerning the health
conditions of individuals and families; providing a database featuring information in
the fields of health and healthcare, namely a database that features a calendar and

23 Reg. No. 2349285.
24 Reg. No. 2349285.
25 Reg. No. 3477973.
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records of interactive discussions and events in the fields of health and healthcare;
providing an on-line database of health professionals and medical treatment centers
available to the public; providing an interactive computer database in the field of
medical diagnostics; providing medical and pharmaceutical information services via
an online database of reference materials.26

In comparing Opposer’s services set forth immediately above to Applicant’s
“Medical services and preventive healthcare services provided via telecommunication
and global computer networks to monitor and provide medical care to individuals
through the use of wearable medical devices and other consumer health care
monitoring products,” we find them highly related. As a general matter, Opposer’s
identified services, which involve providing medical and healthcare-related
information, tools, consulting, and records maintenance, share the same health care
objective and some of the same elements as Applicant’s services. For example,
Opposer’s “preventative medical assessment and screening” services can serve as
features of “preventive healthcare services,” such as are identified in the Application.
Moreover, the evidence shows that in practice, Opposer’s medical assessment and
screening services, as well as Opposer’s provision of software to users for medical
assessment and profiling, allow users to monitor their health and interact with
WebMD staff over the telephone or Internet to receive health-related counselling and
advice.27 This parallels Applicant’s “medical services and preventive healthcare
services provided via telecommunication and global computer networks” “through the
use of … health care monitoring products.” Similarly, Opposer’s identified services

26 Reg. No. 3128335.
27 10 TTABVUE at 60-65 (WebMD health services webpage).
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offer users “an interactive computer database in the field of medical diagnostics,” and
diagnostics form part of “medical services,” such as are identified in the Application.
Certainly, “preventive healthcare services” such as those in the Application would
involve providing medical information, a focal point of Opposer’s services. Opposer’s
and Applicant’s services share the added similarity of online delivery, making
consumers more apt to view them as related.
In addition, Applicant’s identification specifically mentions monitoring through
wearable devices as part of its medical and preventive healthcare services, and the
evidence shows that Opposer allows its consumers to collect information and report
to their WebMD coaches using wearable devices.28 Mr. Stein also testified that
several of Opposer’s competitors are integrating data from health monitoring
devices,29 thereby demonstrating a trend in the industry for these types of services to
come from the same provider.
To further support the relatedness of the services at issue, we note other evidence
in the record that the same entities provide services such as those in the Application
and in the Registrations. For example, Mr. Stein testified that WebMD competes
against “health plans that carve in these services [such as WebMD’s private portal
services], like United and Optum.”30 Applicant introduced evidence that Opposer
identifies its competitors as including Kaiser Permanente, as well as “services offered

28 11 TTABVUE at 98 (Stein testimony).
29 11 TTABVUE at 85-86 (Stein testimony).
30 11 TTABVUE at 84 (Stein testimony).
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by health management and disease management vendors, such as Mayo Foundation
for Medical Education and Research….”31 Also, in practice, Applicant promotes
services under the WearMD mark that include “Health & Wellness
Recommendations,” “Personalized Health & Wellness Education,” “Wearable Data
Analysis,”32 “Activity Coaching, Nutrition Guidance, Weight Management, Diabetes
Management, Blood Pressure Monitoring, and Sleep Tuning.”33 We stress that we
consider Applicant’s actual services not to expand our comparison of services outside
the scope of the identifications in the Application and Registrations, but rather as an
example of a single service provider offering the services identified both in the
Application and in the Registrations.
As additional proof of relatedness, Opposer demonstrated that in March 2013,
before the filing date of the Application, it announced a venture to provide, under the
WEBMD mark, a “full service engagement platform to provide consumers with
personal health information, such as health records and health conditions, to connect
with their physicians and other health care providers, to monitor their own health
and to interact with the health care system.”34 Opposer already had moved into the
medical wearable technology realm, as have several of its competitors.35 Customers
may synchronize wearable devices through Opposer’s private portal services and

31 12 TTABVUE at 18 (Opposer’s Interrogatory Answer, introduced by Applicant).
32 12 TTABVUE at 105-106.
33 Id. at 108.
34 11 TTABVUE at 8.
35 Id. at 11 (Zatz testimony); see also 12 TTABVUE at 12 (Opposer’s Interrogatory Answer
regarding revenue from wearable device-related services, introduced by Applicant).
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make resulting information visible to their personal “coaches”.36 Opposer’s President,
Dr. Stephen Zatz, testified that Opposer has a program “for people to hook up” a wide
range of devices like scales and glucometers, such that the data from the devices
“flows into our WebMD Healthy Target feature and then that information can be
interpreted and helps them to use and encourage them to achieve whatever their
health goals are.”37 He estimated that “many thousands” of consumers use wearable
devices in their interaction with “the WebMD site or maybe Health Tracker.”38 Thus,
the record reflects that some of Opposer’s identified services such as its consulting
and counseling services and its provision of preventative medical assessment and
screening involve the very same type of “wearable medical devices and other
consumer health care monitoring products” identified as the vehicle for the services
in the Application.
Applicant argues against relatedness by asserting that “Opposer does not provide
medical care,” and that “Opposer does not provide medical advice by doctors,” while
Applicant “provides medical services, advice and consultation provided by doctors
directly to patients.”39 Mr. Stein conceded that any doctors on staff with Opposer
currently are not involved in medical diagnostic care.40 However, in assessing
Applicant’s services, we look to the identification in the Application, and the same

36 11 TTABVUE at 98 (Stein testimony).
37 Id. at 11, 19-22 (Zatz testimony).
38 Id. at 37-38 (Zatz testimony).
39 16 TTABVUE at 14 (Applicant’s Brief).
40 11 TTABUVE at 97-98 (Stein testimony).
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holds true for Opposer’s services identified in the Registrations. See Stone Lion
Capital Partners, 110 USPQ2d at 1162; Octocom Sys., 16 USPQ2d at 1787. The
Application includes no restriction that only doctors provide its medical services,41
and the identifications in the Registrations do not foreclose the possibility that
doctors could provide some of the identified services, such as preventive medical
assessment and screening. Moreover, even were we to look beyond the identifications,
Mr. Stein testified that Opposer has nurses who support WebMD’s condition
management efforts, reflecting the involvement of healthcare professionals in
providing some of Opposer’s services.42
The record overall establishes that the services identified in the Registrations are
highly related to, and even appear to overlap to some degree with, the services
identified in the Application. The evidence and testimony suggest that consumers are
accustomed to encountering the same entities providing services such as WebMD’s
healthcare-related information, tools, consulting, and records maintenance, and also
healthcare services such as WearMD’s. Accordingly, we find Applicant’s services
highly related to services in each of Opposer’s pleaded Registrations.43

41 We take judicial notice of the definition of “medical” from the Merriam-Webster Online
Dictionary, http://www.merriam-webster.com/dictionary/medical: “of or relating to the
treatment of diseases and injuries: of or relating to medicine.” See Univ. of Norte Dame du
Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
42 Id. at 97 (Stein testimony).
43 Although we note the arguments made based on Opposer’s alleged “natural zone of
expansion,” this doctrine is generally used in assessing priority as to geographic areas and,
regardless, “requires a specific analysis that does not appreciably add to our understanding
of the relatedness of the [services] in this case.” General Mills Inc. v. Fage Dairy Processing
Industry SA, 100 USPQ2d 1584, 1598 (TTAB 2011), judgment set aside on other grounds, 110
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Trade Channels
We presume that to the extent Opposer’s and Applicant’s identifications contain
no trade channel restrictions, they travel through all usual channels of trade. See In
re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); see also
Cunningham 55 USPQ2d at 1846 (affirming Board finding that where the
identification is unrestricted, “we must deem the goods to travel in all appropriate
trade channels to all potential purchasers of such goods”). While certain of the
services in Opposer’s WebMD HEALTH MANAGER registration are directed to
“subscribers such as physicians and other healthcare professionals,” the excerpted
services set forth above on which we rely as the closest to Applicant’s contain no such
specialized trade channels and several explicitly state that they are directed to “the
public” or “consumers.” Thus, the relevant services involve trade channels that
consist of or include members of the general public. Opposer operates “a public
website through which members of the public can access services,” and also provides
services to “healthcare providers, to organizations and their employees, and to the
public.”44 According to Opposer, the typical WebMD private portal consumer “aligns
with the typical consumer within the United States.”45 Opposer markets its services
through Twitter, Facebook, Google, and Google+,46 as well as trade shows, print

USPQ2d 1679 (TTAB 2014) (non-precedential) (“the factual findings and rulings of law in
that decision remain undisturbed”).
44 12 TTABVUE at 13 (Opposer’s Interrogatory Answers, introduced by Applicant).
45 11 TTABVUE at 74 (Stein testimony).
46 11 TTABVUE at 14-15 (Zatz testimony).
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materials, and direct marketing.47 Applicant also provides its services through the
Internet, and advertises online, through Facebook, Twitter and Google+, as well as
through web directories, press releases, trade shows, and through email marketing.48
Thus, the services identified in the Application and Registrations move in the same
channels of trade to the same general classes of customers.
Similarity of the Marks
Turning to the marks themselves, we find them similar. We remain mindful that
“marks ‘must be considered . . . in light of the fallibility of memory’ and ‘not on the
basis of side-by-side comparison.’ [citation omitted].” In re St. Helena Hosp., 774 F.3d
747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014). We also bear in mind our earlier
finding that Opposer’s WebMD mark is famous, and that a famous mark “casts a long
shadow which competitors must avoid.” Bose Corp., 63 USPQ2d at 1305; see also
Kenner Parker Toys, Inc. v. Rose Art Ind., Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456
(Fed. Cir. 1992) (“The Lanham Act’s tolerance for similarity between competing
marks varies inversely with the fame of the prior mark”).
WebMD and WearMD share a visual and phonetic similarity because they both
consist of the common element MD preceded by a one-syllable word starting with W-
E. The shared MD component, in the context of the services in both the Application
and the Registrations, refers to “doctor of medicine” or “medical department,”49 and

47 11 TTABVUE at 72-73 (Stein testimony).
48 9 TTABVUE at 17-18 (Applicant’s Interrogatory Answer, introduced by Opposer).
49 We take judicial notice of the definition of “MD.” http://www.merriam-
webster.com/dictionary/md. See Univ. of Notre Dame du Lac, 213 USPQ at 596.
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this contributes to a similar commercial impression. We have considered that
although the first words of each mark look and sound similar, they are different words
with distinct meanings, and some consumers would notice the difference. However,
given the fame of WebMD, the highly related services, and the suggestiveness of
“wear” in this context with wearable device technology,50 such consumers likely would
view WearMD as a clever variation by Opposer on its famous WebMD mark in order
to promote services with such technology. As to the WebMD HEALTH MANAGER
registered mark, the additional wording HEALTH MANAGER comes later in the
mark and has been disclaimed as descriptive, rendering it less significant. See In re
Dixie Rests., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997). While we still
have considered this additional wording in the context of the mark as a whole, we do
not find it sufficient to overcome the similarity of the dominant WebMD portion to
the WearMD mark. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1676 (Fed. Cir. 2015) (impermissible to give no significance to a
disclaimed term but permissible to give it less significance). Thus, comparing the
WebMD marks and the WebMD HEALTH MANAGER mark to the WearMD mark,
given the similarities in the look, sound, and commercial impression of the marks, we
find the marks in their entireties similar.
We reject Applicant’s arguments against similarity that rest on particular
presentations of the applied-for and registered standard character marks in the
marketplace. “Registrations with typed drawings are not limited to any particular

50 11 TTABVUE at 39 (Zatz testimony).
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rendition of the mark and, in particular, are not limited to the mark as it is used in
commerce.” Cunningham, 55 USPQ2d at 1847. “It is settled ... that distinction in
trade dress cannot weigh against likelihood of confusion with respect to the
registration of a simple word mark .... The reason is that such dress might well be
changed at any time; only the word mark itself is to be registered.” Kimberly-Clark
Corp. v. H. Douglas Enters., 774 F.2d 1144, 227 USPQ 541, 543 (Fed. Cir. 1985).
Actual Confusion Factors
Applicant also argues that it knows of no instances of actual confusion with
Opposer during its approximately two years of sales under the WearMD mark.51 See
du Pont, 177 USPQ at 567 (identifying seventh and eighth du Pont factors as “the
nature and extent of any actual confusion,” and “the length of time during and
conditions under which there has been concurrent use without evidence of actual
confusion”). Similarly, Opposer indicated that it remains unaware of any instance of
actual confusion.52 The limited amount of time Applicant’s mark has been used
creates “little opportunity for confusion to have occurred.” See Bd. of Regents v. S.
Illinois Miners, LLC, 110 USPQ2d 1182, 1196 (TTAB 2014) (finding actual confusion
factors neutral where only two years of simultaneous use); Interstate Brands Corp. v.
McKee Foods Corp., 53 USPQ2d 1910, 1915 (TTAB 2000) (lack of actual confusion not
significant where “the time period in which both products have been on the market

51 16 TTABVUE at 19 (Applicant’s Brief).
52 12 TTABUVE at 20 (Opposer’s Interrogatory Answer).
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has been relatively brief--a little more than two years at the time of applicant’s
testimony”). Accordingly, we find this factor neutral.
Conclusion
Given the fame of Opposer’s WebMD marks for the services identified in the
Registrations, the similarity of the marks at issue, and the highly related services
that travel in the same trade channels to the same classes of consumers, we conclude
that confusion is likely.
Decision: The opposition is sustained.