TTABlog Test: Is CLAIM WATCHER Confusable With CLAIM WATCH & Design for Certain Insurance Claim Services?

So far this year, the Board has affirmed a mere 83% of the Section 2(d) refusal it has reviewed - a drop from its 89% average over the past decade. Here's the latest decision. The USPTO refused to register CLAIM WATCHER for “Health benefit plan services, namely, insurance administration services, namely, assisting others with adjusting insurance claims in the nature of repricing health insurance claims” (Class 36) and for “Legal services, namely, legal consulting and defense relating to health insurance claims" (Class 45) (CLAIM disclaimed), finding confusion likely with the registered mark shown below, for "Tracking and monitoring the status of insurance claims for business purposes." How do you think this appeal came out? In re Homestead Strategic Holdings, Inc., Serial No. 90263580 (May 17, 2023) [not precedential] (Opinion by Judge Christopher Larkin).

The Board found the term CLAIM WATCH to be the dominant element in the cited mark. Applicant feebly argued that the highly stylized letter “P” dominates the cited mark “because it represents ‘Parker,’ the last name associated with the Cited Registration’s owner, ‘James G. Parker Insurance Associates.’” Of course, that argument was useless, since the Board must consider the mark as depicted in the application drawing, without any reference to external materials.

Considering the marks in their entireties, the Board found them to be similar in appearance, sound, connotation, and commercial impression.

As to applicant's Class 36 services, the Board found the recitation to be vague and so it relied on external materials in construing the services to include "any form of negotiation by a third-party insurance administrator (on behalf of a health benefit plan) with a health care provider to adjust the provider’s health insurance claim to the plan." The Class 45 services are limited to the defense of health insurance claims, "including the sort of consulting and defense provided by applicant in the context of claims asserted by a health care provider against a health care plan or its members." The Board concluded that applicant's identification cannot reasonably be construed to cover the prosecution of “health insurance claims” against a health insurer by an insured because the recitation specifically relates to consulting and defense, not prosecution.

As to registrant's services, there is no restriction on the nature of the “insurance claims” that are the subject of the tracking and monitoring services, and so they must be construed to include the tracking and monitoring of the status of health insurance claims.

Nonetheless, there is a distinct difference between tracking and monitoring the status of a claim and assisting others in the repricing of health insurance claims. Moreover, the limiting language “for business purposes” further narrows the registrant’s services to encompass only those “insurance claims” submitted “for business purposes” and the registrant’s “tracking and monitoring” of the “status” of such claims.

The Board saw nothing in the USPTO's evidence indicating that the marks at issue would be exposed to the same consumers" when used with the respective services of applicant and registrant, "or that consumers have become accustomed to seeing the same marks used in connection with those sets of services." 

The finding of dissimilarity under the second DuPont factor was deemed to outweigh the similarity of the marks, and so, the Board reversed the refusal to register.

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Text Copyright John L. Welch 2023.