Precedential No. 5: TTAB Finds SAGEFORTH Confusable With SAGE CENTRAL for Medical Information Services, Dismisses Section 18 Counterclaim Without Prejudice
The Board sustained this Section 2(d) opposition to registration of the mark SAGEFORTH for "providing information in the field of psychological counseling, assessments, diagnosis, and treatment," in view of the registered mark SAGE CENTRAL for "providing health and medical information about postpartum depression and treatment." The only somewhat interesting part of the decision concerned the Board's dismissal (without prejudice) of applicant's counterclaim to restrict four additional pleaded registrations that the Board did not include in its Section 2(d) analysis. Sage Therapeutics, Inc. v. SageForth Psychological Services, LLC,, Opposition No. 91270181 (April 12, 2024) [precedential] (Opinion by Judge Mark A. Thurmon).
Likelihood of Confusion: The Board focused on opposer's mark SAGE CENTRAL, mechanically finding applicant's mark SAGEFORTH to be similar in appearance, sound, meaning, and commercial impression. "The common 'sage' element of the marks anchors them in a way to the same theme and creates a risk that consumers will mistakenly assume connections between the services provided under the marks."
As to the services, applicant's broad identification, with no limitations on the type of mental health issues covered, "include[s] providing information relating to any type of mental health condition that falls within the scope of psychological care." The involved services are therefore legally identical, and so the overlapping services are presumed to be offered through the same trade channels to the same classes of consumers.
Evidence of third-party registration and use of the word "sage" in connection with the provision of information regarding mental health led the Board to find that "'sage' is somewhat conceptually weak as a source-identifier within the mental health field." The Board concluded that SAGE CENTRAL "is less conceptually strong than an arbitrary mark. but suggestive marks are inherently distinctive and entitled to protection."
When we consider all the relevant DuPont factors, and assign appropriate weights to the factors, Opposer has proven its Section 2(d) claim by a preponderance of the evidence.
Counterclaim for Restriction: Applicant's counterclaim targeted four registrations for the mark SAGE THEREAPEUTICS in various forms, all for a "House mark for pharmaceutical preparations." Applicant sought to restrict those registrations to "a house mark for pharmaceutical preparations that treat post-partum depression."
In order to prevail on its Section 18 counterclaim for restriction, applicant would have to prove two elements: (1) the proposed amendment avoids a likelihood of confusion finding; and (2) the proposed amendment is supported by the evidence. Wellcome Found. Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479 (TTAB 1998) (citing Eurostar v. “Euro-Star” Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1271 (TTAB 1994)); TBMP § 309.03(d).
In Eurostar, the Board held that "in a case involving likelihood of confusion, we should not exercise our authority under Section 18 to permit an action to restrict an application or registration where such a restriction is divorced from the question of likelihood of confusion.” Eurostar, 34 USPQ2d at 1270. Here, the Board concluded that the counterclaim "cannot avoid the likelihood of confusion finding we made to sustain the opposition, and we therefore see no purpose in addressing it now."
The Board deemed the counterclaim to be moot, since the four targeted registrations were not included in the Section 2(d) analysis. Dismissing the Section 18 counterclaim but without prejudice, the reasoned:
[I]t remains possible that Opposer here might assert the same four registrations in an infringement proceeding challenging Applicant’s use of its mark. In that scenario, we see no reason why Applicant should not retain the right to bring a counterclaim against any of the registrations asserted against it, which could include the four house mark registrations it challenged through its counterclaim in this proceeding.
The Board considered its ruling to be a "modest extension" of its Section 18 precedent:
We thus hold that a Section 18 counterclaim should be denied without prejudice if the Board sustains a Section 2(d) opposition based on registrations that are not challenged by the counterclaim. This modest extension of the Eurostar holdings is consistent with the policies and concerns behind that decision. Section 18 should not be used to force the Board into conducting likelihood of confusion analyses that cannot have a real impact on the registrability of a mark.
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TTABlogger comment: Do you agree that the marks look alike? sound alike? have the same meaning? BTW, if the counterclaim is moot, is the Section 18 discussion mere dictum?
Text Copyright John L. Welch 2024.
posted by John L. Welch @ 4/15/2024
6 comments
6 Comments:
I don't think the confusuion analysis is that straightfoward. The marks don't have the same commercial impression at all.
I didn't say I agreed with the 2(d) analysis, but it was straightforward in the sense that the Board applied its usual mechanical approach. Do you think the marks look and sound alike? I don't. Do they have the same meaning? no. The only reason the opinion is precedential is the Section 18 discussion. By the way, if the Section 18 claim is moot, is that discussion mere dictum?
I totally disagree with the 2(d) analysis but I am biased because I represented the applicant. Let's start with the fact that the marks are not identical and their differences are distinctive terms - SAGE CENTRAL v. SAGEFORTH. Then, consider that the Board acknowledged that SAGE is common, i.e. commercially weak, yet it still found SAGE dominant presumably because it is the first word in both marks.
Also, lost in this summary because it is just a summary is that the opposer is a pharmaceutical company with one drug on the market that treats post-partum depression and the applicant is a psychological counseling practice. The Board compared one broad clause in the application ID that probably had 20 other specific clauses describing her psychological counseling practice and claimed it encompassed information about post-partum depression. There also was testimony by both witnesses that depression is an extremely complicated diagnosis with many levels and post-partum depression is typically diagnosed by obstetricians and pediatricians, not psychologists. Should IDs in applications and registrations be interpreted with a little more context from the rest of the ID, or the nature of the mark owner?
Lastly, while I agree that the precedential holding could apply very rarely, it could affect a lot more TTAB cases if more TTAB defendants would use Section 18 to challenge the registrations asserted against them.
One other comment on the Board's "usual mechanical approach" which I have seen cherry pick the asserted registrations when multiple are asserted. Should that be a "usual approach" or should the Board at least explain its reason for choosing the asserted registrations that it relied upon? It did not in this case which exposes the applicant to potential infringement liability from the unaddressed asserted marks. Yes, it was nice of the Board to dismiss the counterclaim without prejudice, but if the Board could have explained that it did not rely on those asserted registrations because they clearly were not confusingly similar, that at least would make the decision a little more thorough and complete. The Board really has to economize its "usual mechanical approach" likelihood of confusion analyses.
I wonder whether a district court, in a civil action for review under Section 1071, would reach the same conclusion on likelihood of confusion.
Alex, thanks for your comments. I notice that, since the CAFC decision in Naterra, the Board is citing the Detroit Athletic case for the proposition that when marks share the same word and similar structure, the 1st DuPont factor weighs "heavily." Couple that with the tendencey of the Board to find all goods/service related, the hurdle to overcome a Section 2(d) claim or refusal is higher than ever. In Detroit, however, the second words were highly descriptive or generic. Not so here.
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