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The Federal Circuit Expands The Application Of Its “Something More” Standard

On December 19, 2014, in a precedential opinion, the U.S. Court of Appeals, for the Federal Circuit overturned the Trademark Trial and Appeal Board’s (the “Board”) decision which had affirmed a Section 2(d) refusal.  See In re St. Helena Hospital, 113 USPQ2d 1082 (Fed. Cir. 2014) [precedential]. The Federal Circuit has now clarified its goods and services standard in likelihood of confusion cases.  St. Helena Hospital (“Applicant”) filed a use-based trademark application to register the mark TAKETEN for “health care services, namely evaluating weight and life-style health and implementing weight and life-style health improvement plans in a hospital based residential program.” The Examining Attorney refused to register the Applicant’s mark based on a likelihood of confusion with two previously registered trademarks both owned by Ilsi Research Foundation Corporation (“Registrant”).

The previously registered marks included: (1) TAKE 10! in standard character format for printed manuals, posters, stickers, activity cards and educational worksheets, dealing with physical activity and physical fitness and (2) TAKE 10! a stylized mark for prerecorded videocassettes featuring physical activity and physical fitness promotion programs in addition to the goods identified in the first registration. The Board determined that the two marks were phonetically identical (TAKETEN and TAKE 10!). In addition, it determined the meanings were the same. The phrase means to take a break especially from work. Also, the Board concluded that the commercial impressions were comparable. On all four counts, appearance, sound, meaning, and commercial impression, the Board found that it weighed in favor of finding a likelihood of confusion.

Next the Board examined the parties’ services. The evidence showed that the Applicant’s written materials, forms, worksheets, notebooks, and newsletters were used in connection with health-care services for evaluating weight loss programs and implementing weight and health improvement programs. The Board held that these products were related to the Registrant’s goods and that consumers were likely to believe that the services and products came from the same source or were sponsored by a common company. After weighing the other du Pont factors, the Board affirmed the refusal to register. See In re St. Helena Hospital, Serial No. 85416343 (June 25, 2013).

The applicant appealed to the Federal Circuit. Although the U.S. Court of Appeals agreed with the Board’s determination that the parties’ marks were similar, it disagreed with its findings with respect to the relatedness of the goods and services. The Federal Circuit’s decision is significant because it expanded the application of its “something more” standard. The Federal Circuit held that when the relatedness of services and products is “not evident, well known or generally recognized” the USPTO will have to present “something more” than the mere fact that both marks are similar and that the goods and services could be used together. The Federal Circuit criticized the USPTO for failing to produce enough evidence to show that the parties’ goods and services were commercially related.

The Court pointed out that in the past, the “something more” standard had only been applied to restaurants, food, and the beverage industry. However, the Court held that the rule is not so limited and this standard should apply whenever the relatedness between the goods and services is not evident, well known or generally recognized. The Federal Circuit also took issue with the Board’s statement that the Applicant’s services and the registrant’s goods are promoted through websites on the Internet, therefore the channels of trade are similar. The Court pointed out that it is well settled that advertising on the Internet proves little about the likelihood that consumers will confuse the source of similar trademarks.

The Federal Circuit held that the mark TAKETEN used by the Applicant for a ten day preventative medicine program was not likely to cause confusion with the mark TAKE 10! that was being used for an initiative to persuade schools to provide physical activity programs for its students. The Court found the Board’s conclusion was not supported by substantial evidence. In the end, the Federal Circuit reversed the Board’s refusal to register the mark TAKETEN and remanded the case for further proceedings consistent with its opinion. This case will impact the relatedness analysis for goods and services. If you have questions about whether your trademark may cause a likelihood of confusion with another’s mark, please contact our office for a courtesy trademark consultation.