Friday, October 07, 2005

Irked TTAB Takes Counsel to Task In Dismissal of "CAREFIRST" Opposition

In what may be the longest opinion of the year (74 pages, but who's counting?), the Board chastised counsel for their disruptive and contentious behavior and then dismissed the opposition of CareFirst of Maryland, Inc., owner of the registered mark CAREFIRST for various health care services, to registration of the mark FIRSTCAROLINACARE by FirstHealth of the Carolinas, Inc. for overlapping services. Opposer claimed that Applicant's mark would likely cause confusion and dilution of its registered mark, while Applicant unsuccessfully counterclaimed for cancellation on the ground of abandonment due to uncontrolled licensing and failure to use the mark on certain services. Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492 (TTAB 2005) [deemed citable on December 2, 2005 (here)].

The Board noted that "[s]eldom does a Board proceeding generate a record of the size in this case, ... not to mention the level of contentiousness between counsel." In earlier orders the Board agreed with Applicant's criticism of Opposer's behavior as "dilatory gamesmanship" and found Opposer's discovery conduct to be "a waste of both parties' time and of the Board's resources." The Board stated that it was "appalled at the history of these oppositions."

"Reading the testimony in this case required extreme patience given the fact that counsel interposed objection after objection after objection. Many objections appeared to be interposed for no purpose other than to disrupt the flow of the testimony. In certain instances, the objections degenerated into downright hostility and contempt between the attorneys."

After spending seventeen pages dealing with various evidentiary objections, the Board characterized the "gamesmanship" of the parties as "breathtaking" and "wasteful."

Turning to the substantive issues, the Board noted that the services of the parties overlap -- a factor favoring opposer. However, it also observed that "in purchasing healthcare services, even ordinary consumers are likely to exercise greater care and will know with whom they are dealing."

Opposer claimed that its mark is famous, but the Board was not convinced. Quoting from its recent decision in Blue Man Productions, Inc. v. Tarmann, 75 USPQ2d 1811, 1819 (TTAB 2005) [TTABlogged here], the Board pointed out that:

"In view of the extreme deference that is accorded to a famous mark in terms of the wide latitude of legal protection it receives, and the dominant role fame plays in the likelihood of confusion analysis, we think that it is the duty of a plaintiff asserting that its mark is famous to clearly prove it."

Opposer's evidence fell short. Although it submitted documents showing revenues billions, advertising expenditures in the tens of millions, use of the mark for 28 years, and promotion in a variety of media, Opposer failed to provide evidence “attesting to the accuracy” of the revenue figures. Moreover, it failed to segregate revenues under the mark in question from that under other marks, and it failed to provide any context for the sales and advertising figures. Opposer submitted two brand awareness studies, but they were of “little assistance” because they were based on “aided” rather than “unaided” awareness. The Board therefore rejected Opposer's fame claim and instead concluded only that the mark CAREFIRST "has achieved a degree of recognition in the healthcare field."

As to the marks, Applicant hit a grand slam worthy of George Brett: the Board found the marks dissimilar in appearance, sound, meaning, and commercial impression.

Applicant's evidence of third-party use proved to be significant. It adduced testimony from twelve witnesses regarding use of marks or names comprising or containing the words "care" and/or "first" in the healthcare field, leading the Board to conclude that the field "is crowded by marks containing one or both elements. The Board found it "reasonable to conclude that consumers have become conditioned to recognize that many entities in the field use such terms. Thus consumers likely are able to distinguish between entities based on distinctions among the marks, including between CAREFIRST and FIRSTCAROLINACARE."

In sum, the Board found the likelihood of confusion "as amounting to only a speculative, theoretical possibility," which is not enough to satisfy Section 2(d).

As to dilution, the Board dismissed that claim "easily" because the marks are not "identical or very or substantially similar," as required by Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1178 (TTAB 2001).

TTABlog comment: The Board noted that Opposer CareFirst “has been very aggressive in challenging other uses of ‘Care’ and ‘First’ marks in the healthcare field.” CareFirst has “been involved in at least forty-nine trademark actions (seventeen in the federal district courts and thirty two at the TTAB) involving its CAREFIRST mark.”

I think we can expect an appeal in this one.

Text Copyright John L. Welch 2005.


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