In re St. Helena Hosp.
| Decision Date | 16 December 2014 |
| Docket Number | No. 2014–1009.,2014–1009. |
| Citation | 774 F.3d 747 |
| Parties | In re ST. HELENA HOSPITAL. |
| Court | U.S. Court of Appeals — Federal Circuit |
OPINION TEXT STARTS HERE
Bradley P. Heisler, Heisler & Associates, of Roseville, CA, argued for appellant.
Christina J. Hieber, Associate Solicitor, argued for appellee. With her on the brief were Nathan K. Kelley, Solicitor and Thomas L. Casagrande, Associate Solicitor.
Before LOURIE, LINN and O'MALLEY, Circuit Judges.
St. Helena Hospital (“St. Helena”) appeals from the decision of the Trademark Trial and Appeal Board (“the Board”) in In re St. Helena Hosp., Serial No. 85/416,343, 2013 WL 5407267 (T.T.A.B., June 25, 2013). The Board affirmed the examiner's rejection of St. Helena's application to register “TAKETEN,” under 15 U.S.C. § 1052(d) (2012), as likely to cause confusion with the mark “TAKE 10!” shown in United States Registration No. 2,577,657 (“the '657 Registration”). Because the Board erred in its determination of likelihood of confusion, we reverse and remand.
St. Helena conducts a 10–day residential health improvement program at its in-patient facility in St. Helena, California. The program is identified by the mark “TAKETEN.” St. Helena applied to the United States Patent and Trademark Office (“PTO”) to register the mark. St. Helena's application identifies the service as “[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. St. Helena,2013 WL 5407267, at *1.
The examiner refused to register St. Helena's mark, citing a likelihood of confusion with the “TAKE 10!” mark shown in the '657 Registration and commonly owned U.S. Registration No. 2,674,182 (“the '182 Registration”) for the mark Id. Both of the cited registrations are for “printed manuals, posters, stickers, activity cards and educational worksheets dealing with physical activity and physical fitness” in class 16. Id. The registration for also identifies goods in class 9, namely, “pre-recorded videocassettes featuring physical activity and physical fitness promotion programs.”
St. Helena appealed to the Board,1 which analyzed the likelihood of confusion between the “TAKETEN” and “TAKE 10!” marks by examining the first four of the factors discussed in Application of E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A.1973), namely: (1) the similarity or dissimilarity of the marks in terms of appearance, sound, meaning and commercial impression; (2) the similarity or dissimilarity and nature of the goods and services; (3) the similarity or dissimilarity of established, likely-to-continue channels of trade; and (4) the conditions under which and buyers to whom sales are made, i.e., degree of consumer care. St. Helena, 2013 WL 5407267, at *1–5. The Board found that the balance of the factors supported the conclusion of likelihood of confusion and affirmed the examiner's refusal to register St. Helena's mark.
St. Helena appeals. We have jurisdiction pursuant to 15 U.S.C. § 1071(a)(1) and 28 U.S.C. § 1295(a)(4)(B).
The PTO may refuse to register a trademark that so resembles a registered mark “as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1052(d). “Whether a likelihood of confusion exists is a question of law, based on underlying factual determinations.” Hewlett–Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265 (Fed.Cir.2002) (quoting Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1326 (Fed.Cir.2000)). To determine the likelihood of confusion, the Board and this court consider the “relevant” DuPont factors. In re Viterra, Inc., 671 F.3d 1358, 1361 (Fed.Cir.2012) . The PTO bears the burden of showing that a mark should not be registered. See15 U.S.C. § 1052 ().
“This court reviews the Board's conclusions on questions of law without deference.” Hewlett–Packard, 281 F.3d at 1265 (citing Recot, 214 F.3d at 1327). We review the Board's factual findings for substantial evidence, which “requires that this court ask whether a reasonable person might accept that the evidentiary record adequately supports the Board's conclusion.” Id. (citing On–Line Careline, Inc. v. America Online, Inc., 229 F.3d 1080, 1085 (Fed.Cir.2000)).
We address, in turn, each of the DuPont factors considered by the Board.
The Board found that the marks are similar in appearance, sound, meaning and commercial impression. St. Helena,2013 WL 5407267, at *3. In particular, the Board concluded that the marks are “phonetically identical.” Id. at *2. It also found that, in context, the word “ten” and the numeral “10” “mean the same thing,” and, in context, both marks refer to taking a break from work. Id. The Board acknowledged that St. Helena's specimen advertises that spending “ten days with us can put you on the road to a lifetime of good health,” and that registrant's specimen advertises “Healthier Lifestyles 10 Minutes at a Time.” Id. at *2. Finally, the Board found that the difference between the word “ten” and the numeral “10” in the marks was “minimal,” and concluded that the similarity of the marks supports the conclusion of likelihood of confusion. Id.
St. Helena argues that the Board erred. St. Helena focuses on the three differences in appearance between “TAKETEN” and “TAKE 10!,” namely that (1) in “TAKETEN” the number is spelled out rather than written as a numeral; (2) in “TAKETEN” there is no space between the two words; and (3) “TAKETEN” does not end in an exclamation mark. The PTO argues that these differences are insufficient for consumers to recognize the marks as distinct.
St. Helena is correct that there are differences in appearance between registrant'sand applicant's marks. But marks “must be considered ... in light of the fallibility of memory” and “not on the basis of side-by-side comparison.” San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 685 (C.C.P.A.1977). There is nothing in the record to persuade us that any of the differences argued by St. Helena meaningfully distinguish the appearance of the respective marks. Accordingly, we agree with the Board's conclusion that the differences in appearance are minimal.
Regarding differences in sound, St. Helena argues that the exclamation mark in “TAKE 10!” alters the pronunciation of the marks because the registered mark must be uttered emphatically, whereas “TAKETEN” would be spoken in a relaxed fashion. The PTO, quoting Viterra, responds that “there is no correct pronunciation of a trademark, and consumers may pronounce a mark differently than intended by the brand owner.” 671 F.3d at 1367. We are not persuaded that the exclamation mark alters the pronunciation of the cited mark in any significant way, and, thus, have no basis to question that aspect of the Board's decision.
Regarding differences in connotation, St. Helena argues that based on the respective specimens in the record, “TAKE 10!” implies taking ten minutes out of your day whereas “TAKETEN” connotes a ten-day health and fitness program. The PTO responds that both specimens connote taking a break for purposes of health and fitness and that St. Helena's argument inappropriately focuses on extrinsic evidence of actual use. The Board relied on a dictionary definition of “take ten” to conclude that both marks connote taking a break, especially from work. St. Helena, 2013 WL 5407267, at *2 n. 3.
Substantial evidence supports the Board's determination that registrant's and applicant's marks have similar connotations. The registration for “TAKE 10!” covers printed materials “dealing with physical activity and physical fitness.” Id. at *1. St. Helena's application covers “[h]ealth care services, namely, evaluating weight and lifestyle health and implementing weight and lifestyle health improvement plans in a hospital-based residential program.” Id. While the specimens refer to days and minutes, respectively, neither identification specifies a certain period of time or suggests any specific meaning of the word “TEN” or the numeral “10.” Since “the question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods,” we agree with the Board's finding that both marks engender similar connotations. See Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 942 (Fed.Cir.1990) (citing cases).
Finally, St. Helena argues that the commercial impressions are different, contending that the registered mark “TAKE 10!” is more of a shout or command as compared to the suggestion engendered by St. Helena's mark “TAKETEN.” St. Helena points to the TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 807.12(a)(ii), which notes that the deletion of the question mark from “GOT MILK?” “would constitute a material alteration because it changes the commercial impression from a question to a statement.” St. Helena also relies heavily on Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed.Cir.2012), where this court affirmed a Board decision that two marks for “COACH” were not similar because of different connotations and commercial impressions. The PTO argues that the exclamation mark in this case does not change the commercial impression because, if anything, it only changes the emphasis, and not the meaning of the phrase “take ten.” The PTO argues that the example of “GOT MILK?” is...
To continue reading
Request your trial