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).