Precedential No. 27: TTAB Renders Split Decision in Appeal From Section 2(d) Refusal of IMPACT for Various Healthcare Services
In a dubiously precedential decision, the Board affirmed-in-part and reversed-in-part a refusal to register the mark IMPACT for various healthcare-related services in Classes 35, 44, and 45. The USPTO had refused registration in view of the mark IMPACT in the Stylized form shown below (without color), registered for "Consulting services in the field of patient relationship management for healthcare workers” in Class 35 and “Training in patient-centered, evidence-based community health worker-centered healthcare” in Class 41. In re OSF Healthcare System, 2023 USPQ2d 1089 (TTAB 2023) [precedential] (Opinion by Judge Christopher C. Larkin).
The Board first set forth a few standard ground rules for its decision. It observed that "[b]ecause each class in Applicant’s multi-class application is, in effect, a separate application, we consider each class separately, and determine whether [the Examining Attorney] has shown a likelihood of confusion with respect to each." It also noted that "'it is sufficient for finding a likelihood of confusion if relatedness is established for any [service] encompassed by the identification of [services] within a particular class in the application.'"
Applicant's Class 35 Services: Applicant's services include business consulting services that are encompassed by registrant's "consulting services in the field of patient relationship management." Finding the services to be legally identical, and presuming that they travel in the same trade channels to the same classes of purchasers, the Board found confusion likely and it affirmed the refusal.
Applicant's Class 44 Services: These services include "Healthcare and medical coordination with individuals and organizations related to improving community healthcare services." There was no match in the cited registration but the Examining Attorney contended that, based on third-party registrations and websites, these services are related to the services of "Training in patient-centered, evidence-based community health worker-centered healthcare" in the cited registration.
The Board found that only one of the websites appeared to offer both services, and none of the third-party registrations were on point. Thus the evidence was insufficient to support the Section 2(d) refusal, and so the Board reversed as to applicant's Class 44 services.
Applicant's Class 45 Services: Again, the Examining Attorney relied on third-party websites and registrations in maintaining that Registrant's training services are related to applicant's "Charitable services, namely, providing case management services in the nature of coordinating preventative healthcare and wellness program services for vulnerable populations to improve access to healthcare, quality of care, and health outcomes related thereto." For completeness, the Board also considered registrant's consulting services.
The Board found that at most two of the websites and none of the registrations supported the Section 2(d) refusal. Although the Board recognized that, in cases involving identical marks, "the services need not be shown to be closely related for there to be a likelihood of confusion," it found this evidence insufficient to establish relatedness. And so the Board reversed this refusal.
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TTABlogger comment: This decision is so completely fact-bound that, in my opinion, it is useless as citable precedent and does not merit the precedential label. Honk if you agree.
Text Copyright John L. Welch 2023.
posted by John L. Welch @ 9/21/2023
8 comments
8 Comments:
Honk. But it's great to show clients how so-called evidence in an office action that may look impressive is very often garbage. Many 2(d) appeals can be won with a brief that reads "the evidence is insufficient"
In my view this decision should be precedential because it highlights a very common problem with third-party websites relied upon by examining attorneys, which is that examining attorneys take an applicant's goods, A, and the goods in the cited registration, B, describe them in broad terms as C, and then make of record third-party websites offering C for sale even though none of the websites actually show A or B. For example, if the applicant's goods are pesticides and the goods in the cited registration are spades, the examining attorney might describe them generally as "lawncare goods" and cite websites featuring lawncare goods even though none of them actually show the goods at issue: pesticides and spades.
This is what the examining attorney did here with respect to the cited registration's very specific services, i.e., she generalized them as "healthcare/medical training" and then submitting websites about that. The Board faulted this: "That is not the issue. We must determine whether Applicant's Class 44 services are related to the specific 'training in patient-centered, evidence-based community health worker-centered healthcare' identified in the cited registration. The Examining Attorney effectively broadened and generalized that identification of services and submitted evidence addressed to the broader identification, not the actual one." (*10)
This problem with third-party website evidence is widespread so it is good to see it addressed in a precedential decision, which might prompt some needed corrective action at the Office.
The Board also pointed out that of the 25 third-party registrations of record, *none* of them supported a finding that the applicant's services in Classes 44 and 45 were related to the services in the cited registration. I suspect this was intended to be a reminder that examining attorneys are supposed to pay attention to the third-party registrations upon which they rely. Judging by the Office Actions I see, many do not.
Thanks for your comment, Michael. I can see that the opinion is instructive, but is it citable for anything? Is there anything new in it? Or is it just an example of the proper application of the second DuPont factor?
Hi John. I couldn't swear to it, but this might be the first precedential decision to address the impermissible "generalizing" of the goods on third-party websites. I will definitely cite it for that proposition in my responses. This decision won't make headlines but it's helpful for practitioners (and hopefully the Office) in addressing a common form of evidence included with 2(d) refusals.
That seems like common sense to me. Do we need a precedential decision to confirm the obvious?
Over the years, I've tried to figure out what criteria the TTAB uses to designate an opinion as precedent. I can't make any sense of it. On the very few occasions when I've suggested to the Board that a non-precedential case should be designated as precedential, they've ignored me.
Regardless whether it's common sense, this examining attorney generalized and I see it often so I'm glad this decision is precedential.
I've always been skeptical of the underlying assumption that third-party use-based registrations are reliable evidence of the close relationship of goods/services, given the high percentage of registrations that do not reflect actual use in commerce. I believe webpages are much more reliable as evidence. In addition I note in this case while the respective marks were essentially identical, IMPACT is also highly suggestive. Leaving aside the lack of evidence, I believe the lay person may find it difficult to parse out why confusion was likely in Class 35 but not in Classes 44 or 45.
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