Monday, July 23, 2007

TTAB Dismisses "EVOLUTION BENEFITS" 2(d) Opposition: Relevant Purchasers Are Sophisticated and Not Likely to be Confused

The Board dismissed an opposition to registration of the mark EVOLUTION BENEFITS & Design (shown immediately below) for printed matter, financial services, and computer services all relating to the field of voluntary employee savings and defined contribution plans, finding the mark not likely to cause confusion with the previously-used marks EVOLUTIONS HEALTHCARE SYSTEMS and EVOLUTIONS for prepaid healthcare plans in the nature of preferred provider organizations (PPOs). The Board noted that Opposer did not argue that the actual purchasers of the involved services would be confused. Instead Opposer focused its attention on healthcare providers and insured employees, but the Board concluded that those were not the relevant purchasers. Evolutions Healthcare Systems, Inc. v. Evolution Benefits, Inc., Opposition No. 91158602 (July 12, 2007) [not precedential].

Three principal issues were at the heart of the Board's decision: (1) applicability of the doctrine of natural expansion to Opposer Evolutions Healthcare's services; (2) determination of the relevant purchasers; and (3) Opposer's claim of actual confusion.

The Board's rulings on these three issues stemmed from its determination as to the nature and relationship of the parties' respective services. Applicant Evolution Benefits markets payment technology services to the same purchasers to whom opposer markets its PPO network organization services, i.e., to large self-insured, employers, insurance carriers, third-party administrators of employee healthcare benefits plans, and brokers and consultants in the employee benefits industry. Both parties strive to persuade these distributors to include their respective services in the employee benefits package that the distributors are organizing and marketing to the insured employee's employer.

As to the doctrine of natural expansion, the Board ruled that "[t]he evidence of record simply does not support a finding that PPO network organizers, per se, are expanding into the employee benefits accounts and related payment technology market, or that the actual purchasers of the parties' respective goods and/or services would expect such an expansion by a opposer or by any other PPO network organizer."

With regard to the relevant purchasers, the Board found that such purchasers "do not include health-care providers and insured employees who are the downstream end users of the parties' respective services. There is no evidence in the record which would support a finding that these persons influence or are in a position to influence the purchasing decisions made by the actual purchasers of the respective services, i.e., large self-insured employers, insurance carriers, and third-party administrators."

The Board distinguished Beacon Mutual Ins. Co. v. OneBeacon Insurance Group, 71 USPQ2d 1641 (1st Cir. 2004) [link here] because that "was an infringement case in which the plaintiff and the defendant were directly competing workers' compensation insurers. The court's decision held only that overwhelming evidence of actual confusion among providers and insured employees was relevant evidence which sufficed to preclude entry of summary judgment for defendant on the likelihood of confusion issue." Here, the parties are not direct competitors and there was "absolutely no evidence of actual confusion among providers and insured employees." Furthermore, to the extent that Beacon Mutual "suggests that downstream end users are relevant," it is "contrary to the principle laid down by the Federal Circuit, our primary reviewing court, in Electronic Design & Sales, Inc. [21 USPQ2d 1388 (Fed. Cir. 1992)]."

Finally, as to actual confusion, Opposer offered four incidents involving trade show conversations, an allegedly misdirected phone call, and a partly misaddressed letter. However, those incidents did not involve individuals who were customers of either party, and the Board found the evidence to be "too vague, ambiguous, and de minimis to constitute persuasive evidence of actual confusion."

The Board concluded that, on balance, that there is no likelihood of confusion.

"Although the marks are similar and the parties' purchasers are the same, these facts (as well as opposer's unconvincing evidence purported to establish the existence of actual confusion) are outweighed, in our likelihood of confusion analysis, by the basic dissimilarity of the parties' services, and by the sophistication of the relevant purchasers and the care with which the purchasing decision is made."

Text Copyright John L. Welch 2007.


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