January 2015
TTAB Erred in Refusing to Register TAKETEN Mark Based on Likelihood of Confusion with TAKE 10! Mark
| Judges: Lourie, Linn (author), O’Malley |
| [Appealed from TTAB] |
In In re St. Helena Hospital, No. 14-1009 (Fed. Cir. Dec. 16, 2014), the Federal Circuit reversed the TTAB’s refusal to register St. Helena Hospital’s (“St. Helena”) TAKETEN mark for its ten-day residential health improvement program, holding that the mark was not likely to cause confusion with the registered TAKE 10! mark.
St. Helena has used TAKETEN to identify its ten-day residential health improvement program at its in-patient facility in St. Helena, California. St. Helena applied to the PTO to register the TAKETEN mark for “‘[h]ealth care services, namely, evaluating weight and lifestyle health and implementing weight and lifestyle health improvement plans in a hospital-based residential program’ in class 44.” Slip op. at 2 (alteration in original) (quoting In re St. Helena Hosp., Serial No. 85/416,343, 2013 WL 5407267, at *1 (T.T.A.B. June 25, 2013)). The examiner refused the registration, citing a likelihood of confusion with the registered marks for TAKE 10! and TAKE 10! (and Design). Both of the cited registrations were for “‘printed manuals, posters, stickers, activity cards and educational worksheets dealing with physical activity and physical fitness’ in class 16,” and the TAKE 10! (and Design) also identified goods in class 9 for “pre-recorded videocassettes featuring physical activity and physical fitness promotion programs.” Id. (quoting In re St. Helena Hosp., 2013 WL 5407267, at *1). St. Helena appealed to the TTAB, and the TTAB affirmed the examiner’s rejection after determining that the balance of the first four factors discussed in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973), pointed to a likelihood of confusion. St. Helena appealed.
On appeal, the Federal Circuit addressed each of the DuPont factors considered by the TTAB and ultimately reversed and remanded the TTAB’s decision. First, the Court considered the similarity or dissimilarity of the marks. The Court agreed that the TAKETEN and TAKE 10! marks were similar in appearance, sound, meaning, and commercial impression, concluding that “substantial evidence supports the Board’s conclusion that the first DuPont factor points towards a likelihood of confusion.” Id. at 7. The Court noted, however, “that similarity is not a binary factor but is a matter of degree,” and that there were “some, albeit modest, differences between the two marks.” Id. (quoting In re Coors Brewing Co., 343 F.3d 1340, 1344 (Fed. Cir. 2013)).
“In situations like the present, in which the relatedness of the goods and services is obscure or less evident, the PTO will need to show ‘something more’ than the mere fact that the goods and services are ‘used together.’” Slip op. at 10 (quoting Shen Mfg. Co. v. Ritz Hotel, Ltd., 393 F.3d 1238, 1244 (Fed. Cir. 2004)). Slip op. at 16.
Second, the Court considered the similarity or dissimilarity of the nature of the goods and services. The Court disagreed with the TTAB’s conclusion that St. Helena’s services and the TAKE 10! registrant’s printed materials would be encountered by the same persons under conditions and circumstances that could cause them to believe that they emanated from the same source. The Court reasoned that while the cited references showed that printed materials were used in connection with various health services programs, “the mere fact that goods and services are ‘used together’ does not, on its own, show relatedness.” Id. at 9-10 (quoting Shen Mfg. Co. v. Ritz Hotel, Ltd., 393 F.3d 1238, 1244 (Fed. Cir. 2004)). Instead, the Court held that a refusal by the PTO to register a mark based on the similarity of the goods and services requires that the PTO “come forth with a persuasive evidentiary showing of relatedness between the goods and services at issue.” Id. at 10. The Court further held that “[i]n situations like the present, in which the relatedness of the goods and services is obscure or less evident, the PTO will need to show ‘something more’ than the mere fact that the goods and services are ‘used together.’” Id. (quoting Shen Mfg., 393 F.3d at 1244). The Court concluded that the PTO had not shown that St. Helena’s services and the TAKE 10! printed materials were generally recognized as being related, nor had it shown “something more” to establish relatedness in the circumstances of this case. Thus, the Court held that substantial evidence did not support the TTAB’s conclusion that St. Helena’s services were “related” to the TAKE 10! registrant’s goods.
Third, the Court looked to the similarity or dissimilarity of established, likely-to-continue channels of trade, and concluded that both sides’ evidence regarding channels of trade was lacking. Fourth, the Court considered the degree of consumer care, which the TTAB considered to be a neutral factor. The Court disagreed, holding that substantial evidence did not support the TTAB’s conclusion that the level of care exercised by consumers before entering a health-care program is any different than the level of care exercised once in the program.
The Court then balanced the four factors, stating, “While we agree with the Board’s assessment of the respective marks themselves, substantial evidence does not support the PTO’s refusal to register based on the [TAKE 10!] Registration, given the dissimilarities in the respective services and goods and the high degree of consumer care.” Id. at 13. Thus, the Court reversed the TTAB’s refusal to register the TAKETEN mark and remanded for further proceedings.
