OPINION
Drost
Administrative Trademark Judge:
On June
26, 2006, Premera Blue Cross (applicant) filed an
intent-to-use application to register the mark LIFEWISE CARE
BRIDGE, in standard character form, for services ultimately
identified as:
Providing health care information, namely, resource
information, immunization reminder services and online health
care resource information; providing telephone and online
health care information, namely, health guidelines related to
the identification, diagnosis and treatment of diseases
providing information on cancer screening and cancer
treatment programs; providing online information on health
care, nutrition, pregnancy, illness, alternative medicine
children's health care, and senior health care; providing
online health care information about wellness, health
treatment options, health facilities and health-related
questions and answers; providing pharmacy information
services, namely, providing telephone and online health care
information regarding prescription and non-prescription drugs
and drug interactions; providing information for the
management of multiple medications in Class 44.[1]
The
examining attorney has refused to register applicant's
mark under Section 2(d) of the Trademark Act (15 U.S.C.
§ 1052(d)) because of a prior registration for the mark
LIFEWISE, in typed or standard character form, for
"educational services in the field of health care by
means of conducting classes and seminars, providing exercise
facilities and physical fitness programs and the distribution
of related printed material" in Class 41.[2]
Is
applicant's mark LIFEWISE CARE BRIDGE for its services
involving providing health care information likely to cause
confusion, mistake or deception under Section 2(d) of the
Trademark Act (15 U.S.C. § 1052(d)) in view of a
registration for the mark LIFEWISE for educational services
in the field of health care by means of conducting classes
and seminars, providing exercise facilities and physical
fitness programs and the distribution of related printed
material?
The
examining attorney's evidence of third-party, use-based
registrations show that applicant's services involving
providing health care information are related to
registrant's educational services in the field of health
care by means of conducting classes.[3] See Registration
No. 2432744 (Design mark for "conducting classes,
seminars, conferences and workshops in the field of health
care" and "providing health awareness information;
providing prerecorded health care information regarding
various symptoms by telephone"); No. 2871812 (STROKE
PREVENTION PLUS for "workshops and seminars regarding
health care and prevention" and "providing health
care information by telephone"); No. 2975139 (Design
mark for "providing classes, seminars, and educational
exhibitions and fairs in the field of health care" and
"providing health care information over the
internet"); No. 3424444 (HEALTH IS ACTION for
"providing health care information" and
"conducting educational workshops and seminars in the
field of health awareness"); No. 3210350 (HEALTH2WORK
for "wellness and medical information and health
counseling via a global computer network and direct
mail" and "providing classes at a workplace or
other locations in the field of health, wellness and medical
care"); No. 3221442 (HMP COMMUNICATIONS for
"providing seminars and lectures in the field of
healthcare" and "providing on-line information in
the field of healthcare"); No. 3127706 ("providing
information via the Internet about healthcare" and
"conducting classes, workshops, conferences and seminars
in the field of healthcare"); and No. 2900854
(CONDITIONCARE CONNECTION for "providing health care
information by telephone and Internet" and
"providing seminars and workshops in the field of
health").
Applicant
is the owner of the following ten registrations.
I. No. 2349294 LIFEWISE Health, medical and dental insurance
underwriting; administration and organizing of prepaid and/or
preferred provider medical and healthcare plans in Class 36.
II. No. 2992590 (Image Omitted) health, medical, dental,
hospital, pharmaceutical and prescription drug insurance
underwriting; administration and organizing of prepaid and/or
preferred provider health, medical, dental, hospital,
pharmaceutical, prescription drug plans and related
healthcare plans and networks in Class 36.
III. No. 3036105 LIFEWISE LATITUDE Administration and
organization of prepaid healthcare plans; Administering and
underwriting health care coverage through contracted
relationships with subscribers and professional clinical,
hospital, nursing home and other health care providers in
Class 36.
IV. No. 3074638 LIFEWISE ESSENTIALS Health, medical, dental,
hospital, pharmaceutical and prescription drug insurance
underwriting; administration and organizing of prepaid,
managed care and/or preferred provider health, medical,
dental, hospital, pharmaceutical, prescription drug plans and
related healthcare plans, networks and health saving plans;
administering and underwriting health care coverage through
contracted relationships with subscribers and professional
clinical, hospital, nursing home and other health care
providers in Class 36.
V. No. 3074753 LIFEWISE DENTAL CHARTER PLUS Oral care
insurance underwriting; administration and organizing of
prepaid and/or preferred provider oral care plans and related
health care plans and networks, namely claims administration
and processing, enrolling, providing eligibility and benefit
information, claims remittance advising, claims and benefits
reporting in Class 36. "Dental" disclaimed.
VI. No. 3074752 LIFEWISE DENTAL VANTAGE PLUS Oral care
insurance underwriting; administration and organizing of
prepaid and/or preferred provider oral care plans and related
health care plans and networks, namely claims administration
and processing,
enrolling, providing eligibility and benefit information,
claims remittance advising, claims and benefits reporting in
Class 36 "Dental" disclaimed.
VII. No. 3074664 LIFEWISE DENTAL CLASSIC Oral care insurance
underwriting; administration and organizing of prepaid and/or
preferred provider oral care plans and related health care
plans and networks in Class 36 "Dental" disclaimed.
VIII. No. 3091226 LIFEWISE FUND PLANS Health, medical,
hospital, pharmaceutical and prescription drug insurance
underwriting; administration and organizing of prepaid and/or
preferred provider health, medical, hospital, pharmaceutical,
prescription drug plans and related healthcare plans and
networks; administering and underwriting health care coverage
through contracted relationships with subscribers and
professional clinical, hospital, nursing home and other
health care providers in Class 36 "Fund Plans"
disclaimed.
IX. No. 3096117 LIFEWISE ASSURANCE COMPANY Life Insurance and
stop loss insurance in Class 36 "Assurance Company"
disclaimed.
X. No. 3163847 LIFEWISE LIBERTY Self-funded health, medical,
dental, hospital, pharmaceutical and prescription drug
insurance underwriting; administration and organizing of
self-funded health, medical, dental, hospital,
pharmaceutical, prescription drug plans and health savings
accounts and related self-funded healthcare plans and
networks, namely claims administration and processing,
enrolling, providing eligibility and benefit information,
claims remittance advising, claims and benefits reporting;
administering and underwriting self-funded health care
insurance coverage through contracted relationships with
subscribers and professional clinical, hospital, nursing home
and other health care providers in Class 36.
The
examining attorney argues that the "marks create similar
commercial impressions. Applicant's mark, LIFEWISE CARE
BRIDGE, essentially consists of the entirety of the
registered mark, LIFEWISE, plus additional language."
Brief at 2-3. Regarding applicant's claimed
registrations, the examining attorney points out that
"none of the prior registrations owned by the applicant
cover any of the services for which the applicant now seeks
registration… The much closer relationship between the
services of the respective parties would lead consumers to
wrongly believe that the registrant's services under the
mark LIFEWISE came from the same source as the related
services of the applicant, whose mark includes prominent use
of the same term as its 'house mark.'" Brief at
3.
Applicant
argues that the CARE BRIDGE portion of its mark "is
distinctive in its own right." Reply Brief at 1. Also
applicant points out that "registrant's services do
not include the provision of health information other than
within a class or seminar setting… Appellant's
services do not include the offering of classes or
seminars." Id. at 3. Finally, applicant argues
that its "health care information services are related
to its health insurance services, as it is routine for a
health insurance company to also offer health care
information, for example, on its web site and through
mailings." Id. at 4.
When
there is a question of likelihood of confusion, we analyze
the facts as they relate to the relevant factors set out in
In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 U.S.P.Q. 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., 315 F.3d 1311, 65 U.S.P.Q.2d
1201, 1203 (Fed. Cir. 20...
