St. Helena Hospital applied to register the trademark “TAKETEN” for use with its 10-day in-patient health improvement program.  The Patent and Trademark Office examiner refused registration on the basis of likelihood of confusion with earlier registrations for the mark “TAKE 10!”  St. Helena’s application identified its services as “health 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.  The cited “TAKE 10!” registrations are for “printed manuals, posters, stickers, activity cards and educational worksheets dealing with physical activity and physical fitness” in class 16.

On appeal to the TTAB, the Board agreed with the examiner and found the balance of the factors supported the conclusion of likelihood of confusion and affirmed the examiner’s refusal to register St. Helena’s TAKETEN mark.

The Federal Circuit reversed and remanded for further proceedings.  While the Federal Circuit agreed the marks were similar, it found there was no substantial evidence to support the refusal to register the “TAKETEN” mark based on the registered “TAKE 10!” marks.  The Federal Circuit pointed to (1) the dissimilarities in the respective services and goods; and (2) the high degree of consumer care that would be exercised by any consumer selecting and participating in a 10-day hospital-based health care program.  

In re St. Helena Hospital, Case no. 2014-1009, Application no. 85/416,343 (United States Court of Appeals for the Federal Circuit, December 16, 2014).