M.D. Florida District Court Upholds TTAB Decision Affirming Section 2(d) Refusal of VIVE HEALTH for Retail Medical Suply Services

On cross-motions for summary judgment in this civil action for review under Section 1071(b) of the Trademark Act, the U.S. District Court for the Middle District of Florida upheld the TTAB's decision finding confusion likely between Applicant's mark VIVE HEALTH for "On-line retail store services featuring a variety of medical equipment, medical supplies and home health products," in view of the registered mark VIVOHEALTH! (in standard character form) for "retail stores services  . . . featuring health and wellness products, including medical goods." Vive Health LLC v. Andrew Hirschfeld, Civ. No. 2:19-513-FtM-H.B-NPM (M.D. Florida March 23, 2021).

Although Vive Health presented little evidence to the USPTO, it hired expert witnesses and submitted "voluminous materials" in the de novo review afforded by the district court action. 

The court began by making several curious comments regarding the strength of the cited mark VIVOHEALTH! First the court stated that the VIVOHEALTH! mark is considered incontestable because "it has been in continuous use for five consecutive years subsequent to the date of such registration and is still in use in commerce." Actually, a Declaration under Section 15 is also required to achieve incontestability.

The court also asserted that "[a]n incontestable mark is generally entitled to 'strong protection.'" So say some circuits, but TTAB precedent holds that incontestability is irrelevant to the strength of mark. Safer Inc. v. OMS Investments, Inc., 94 USPQ2d 1031 (TTAB 2010) [precedential]. As a practical matter, even a weak, suggestive mark, or a mark that is in minimal use, can attain incontestability just through five years of use and the filing of a declaration. Becoming incontestable has no effect on the strength of the mark: it is the same the day before and the day after.

The court concluded, on somewhat shaky grounds, that the VIVOHEALTH! mark - "which is incontestable and as a suggestive mark, is relatively strong" - is a "strong mark."

Survey evidence regarding pronunciation of the two marks was inconclusive, with some respondents pronouncing "vive" like 'five," and others not. Some respondents pronounced "vive" with two syllables. In any event, the court found the marks to be sufficiently similar in overall commercial impression to support the Board's finding on this factor.

The court found that the services as identified in the application and cited registration overlap, and presumably travel in the same trade channels to the same classes of customers. Applicant asserted that the cited mark is used primarily only in New York [which is irrelevant here - ed.], but the court noted that applicant's own services are not geographically limited. 

Applicant pointed to a lack of evidence of actual confusion, but the court observed that lack of actual confusion is entitled to little weight in an ex parte context.

Concluding that the applicant had failed to carry its burden to prove that confusion between the involved marks is not likely, the court granted the USPTO's motion for summary judgment and dismissed the action.

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TTABlogger comment: Looks like the survey evidence bore out the common TTAB wisdom that there is no correct pronunciation of a trademark (except for common words). For example, how do you pronounce the trademark TTABlog?

Text Copyright John L. Welch 2021.