Tuesday, January 25, 2011

Despite Strength of "ALARIS" and Identity of Marks, Board Dismisses 2(d) Proceedings Due to Lack of Evidence that Medical Goods/Services are Related

Opposer Cardinal Health went one-for-five in this consolidated Section 2(d) proceeding, leaving one to wonder regarding Cardinal's evidence, "is that ALARIS?" [Get it? Is that all there is? LOL - ed.]. Cardinal claimed likelihood of confusion between its registered mark ALARIS for various medical products and related repair and rental services, and Defendant's marks ALARIS SELECT, ALARIS ADVANTAGE, and ALARIS for medical consulting services and franchising services in the field of medical and vocational rehabilitation primarily in the workers compensation industry, and the mark ALARISWARE for computer software used in the field of medical consulting. The Board agreed with Cardinal only as to the last mark. Cardinal Health 303, Inc. v. The Alaris Group, Inc., Oppositions Nos. 91177234, 91177365, 91177366, and 91177367, and Cancellation No. 92048172 (January 3, 2011) [not precedential].

The Board wasted little time in finding that the marks are similar. Cardinal maintained that its mark ALARIS is famous in the healthcare field, but the evidence did not support its claim. However, based on the facts that ALARIS is an arbitrary mark with no evidence of third-party use, the Board found it to be "a strong mark that is entitled to a broader scope of protection."

Cardinal contended that the similarity of the marks and the strength of its mark ALARIS were alone enough for a finding of likelihood of confusion, but the Board disagreed, noting that even when a mark is famous, more than that is required to prove likelihood of confusion. Otherwise, having a famous mark "would entitle the owner to a right in gross."

And so the Board turned to the issue of the relatedness of the involved goods and services. Cardinal claimed potential confusion in the home healthcare market. However, the Board found "no evidence that the patients purchase [Cardinal's] products directly or otherwise are involved in the decision to purchase a particular brand, nor has opposer provided evidence that patients actually not the brands for such products."

Moreover, the Board observed, "[t]he customers for applicant's services and goods are essentially insurance companies who are attempting to keep insurance costs down through the appropriate management of a patient's care. Its customers are not the nurses who actually care for patients, nor ... are its customers the nurse/employees of applicant's who do the case management."

In addition, nurses must be considered as "sophisticated about their field," and would not assume that all goods and services "having anything to do with the medical profession" must emanate from a single source just because they are sold under the identical mark.

And so as to Applicant's consulting and franchising services, "the lack of evidence of relatedness, and the sophistication of the users ... far outweigh the factors of the similarity of the marks and the strength of opposer's mark."

However, as to Applicant's ALARISWARE mark, its goods are "very similar or encompass" Cardinal's "computer programs for capturing, storing, integrating, and presenting data in patient care management systems." Even sophisticated purchasers "are likely to assume that these goods emanate from a single source."

And so the Board sustained Cardinal's opposition to registration of ALARISWARE, and dismissed the other three oppositions and the cancellation proceeding.

TTABlog comment: Now why do you suppose Opposer Cardinal was arguing that the identity of the marks and the strength of its mark should suffice for a likelihood of confusion finding?

Text Copyright John L. Welch 2011.


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