CAFC Reverses TTAB Affirmance of Section 2(d) "TAKETEN" Refusal
In a precedential opinion, the U.S. Court of Appeals for the Federal Circuit reversed a TTAB decision (here) which had affirmed a Section 2(d) refusal to register the mark TAKETEN for "health care services, namely, evaluating weight and lifestyle health and implementing weight and lifestyle health improvement plans in a hospital-based residential program." The Board had agreed with the USPTO in finding the mark confusingly similar to the registered mark TAKE 10! for "printed manuals, posters, stickers, activity cards and educational worksheets dealing with physical activity and physical fitness." In re St. Helena Hospital, 113 USPQ2d 1082 (Fed. Cir. 2014) [precedential].
The Board had found the involved marks to be similar in appearance, sound, meaning and commercial impression. Applicant argued that in its mark TAKETEN refers, as shown in its specimen of use, to ten days, whereas in the cited mark TAKE 10! refers to ten minutes. The CAFC observed, however, that neither mark suggests any specific meaning of "TEN" or "10." The registrability of a mark must be determined "based on the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods," and so the court agreed with the Board’s finding that the marks engender similar connotations. See Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 942 (Fed. Cir. 1990). The court also agreed with the Board that registrant's addition of an exclamation point to "take ten" did not distinguish the marks in overall commercial impression.
At bottom, substantial evidence supports the Board’s conclusion that the first DuPont factor points towards a likelihood of confusion. However, “we note that similarity is not a binary factor but is a matter of degree." In re Coors Brewing Co., 343 F.3d 1340, 1344 (Fed. Cir. 2003). Here, there are some, albeit modest, differences between the two marks.
With regard to the issue of the relatedness of the goods and services, the CAFC concluded that substantial evidence did not support the Board's finding. The evidence relied upon by the examining attorney showed that printed materials are used in connection with various health services programs. However, the fact that goods are and services are "used together" does not show relatedness. When the types of goods and services at issue are "well-known or otherwise generally recognized as having a common source of origin, the PTO’s burden to establish relatedness will be easier to satisfy." However, when the relatedness of the goods and services is "obscure or less evident," the PTO must show "something more" than the mere fact that the goods and services are "used together."
While we have applied the “something more” standard in the past in the context of restaurant services, the rule is not so limited and has application whenever the relatedness of the goods and services is not evident, well-known or generally recognized.
Here, the USPTO did not show that applicant's services and the printed materials of the cited registration are generally recognized as being related, nor did it show the "something more" needed to prove relatedness in this case. The CAFC therefore concluded that the Board’s finding of relatedness between the involved services and goods was not supported by substantial evidence.
As to channels of trade, the evidence on both sides was lacking. The court agreed with the TTAB that registrant's goods were not limited to use by educators, but the court disagreed with the Board that the channels of trade overlap because both applicant and registrant advertise on the Internet.
Advertising on the Internet is ubiquitous and “proves little, if anything, about the likelihood that consumers will confuse similar marks used on such goods or services.” Kinbook, LLC v. Microsoft Corp., 866 F. Supp. 2d 453, 470–71 n.14 (E.D. Pa. 2012) (quoting J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 24:53.50 (4th ed. Supp. 2011)).
The Board had conceded that consumers of applicant's services would exercise a high degree of care, but it had found no evidence that consumers would exercise that same care when analyzing printed materials received while participating in the services. The court ruled that the Board's conclusion was in error because the record contained "no evidence to support a conclusion that the level of care exercised by consumers before entering a health-care program is any different from the level of care exercised once in the program." Consequently, the Board's determination that this factor was neutral lacked substantial supporting evidence.
The CAFC concluded that the refusal to register was not supported by substantial evidence in light of the dissimilarities between the involved services and goods and the high degree of consumer care. The court therefore reversed the Board’s decision and remanded the case for further proceedings.
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TTABlog note: What further proceedings might there be?
Text Copyright John L. Welch 2014.