Friday, May 19, 2023

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 In re Homestead Strategic Holdings, Inc., Serial No. 90263580 (May 17, 2023) [not precedential] (Opinion by Judge Christopher Larkin).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.

Read comments and post your comment here.

TTABlogger comment: What do you think?

Text Copyright John L. Welch 2023.


At 9:49 AM, Anonymous Anonymous said...

I wonder if this was just a flub by the examining attorney. Nowadays it's not whether services are the same that is the hurdle, but whether they are related, with registrations and internet websites used to prove the relatedness. It doesn't look like relatedness was argued here.

At 11:11 AM, Anonymous Anonymous said...

I think they got it wrong. Weird cases like this always make me second guess whether to appeal because you never know!

At 1:48 PM, Anonymous Anonymous said...

Wowzer! That's unexpected. If I was handling this case, the examining attorney would have found the service marks "highly descriptive". Then when I would have appealed, the TTAB would have found relatedness between the classes of services without a second thought. Then the knowledgeable TTABlog reviewers would have said, "what were they thinking?" And then my client would say "WTF!" for the fourth and final stab! Gosh I wish I was that lucky with appeals. I'm in the 83%.

What does "assisting others with adjusting insurance claims in the nature of repricing health insurance claims" even means? In the TTABlog case description, when did "outweight" become a word?

At 2:04 PM, Anonymous Anonymous said...

Relatedness was argued and that is the point I was going to make but it may come across a bit harsh so I choose to be anonymous. In my experience examining attorneys very often will submit what is clearly NOT probative evidence as to relatedness, especially when the case involves sophisticated, highly specialized or technology based services. I get the feeling that they truly believe that what they found is relevant and there is nothing more frustrating than trying to argue this when it seems to be something that they rarely give in one. They probably did a Google search, found some websites that used certain keywords and voila, related services. One would think that a case like this should never have to be appealed because it's a simple matter of reading the IDs and checking for where in the evidence does it say SPECIFICALLY that those services are both offered? I just find it so perplexing that many EAs stick to their guns in a case like this, where the evidence is so poor. I deal with this almost every day. How else can one argue "the evidence does not prove that the services are related". Must we simply parrot what the websites state and then ask where in those words did you find one services from the application and one from the registration. Very often they don't even point that out, so how does one then argue it?

At 2:28 PM, Blogger Emma said...

I think they got it wrong. Weird cases like this always make me second guess whether to appeal because you never know!


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