On Tuesday, the Federal Circuit overturned a U.S. Patent and Trademark decision holding that a hospital’s trademark for a residential, health improvement program can co-exist with a mark used for a research foundation’s fitness program. In the precedential option, the court held that the mark TAKETEN, used by St. Helena Hospital for a 10-day preventative medicine program, was not likely to cause confusion with TAKE 10!, an initiative encouraging schools to provide physical activity programs, sponsored by the International Life Sciences Institute Research Foundation.

In considering the DuPont factors for likelihood of confusion, the court agreed that the first factor (the similarity of the marks) favored a finding of likelihood of confusion, but held that substantial evidence was lacking to support a refusal to register based on the dissimilarities in the goods and services and the high degree of consumer care.

The court clarified the standard for assessing the similarity of goods and services where the relatedness of the goods is not obvious: “In situations like the present, in which the relatedness of the goods and services is obscure or less evident, the PTO will need to show ‘something more’ than the mere fact that the goods and services are ‘used together.’” The PTO cannot refuse registration simply because goods and services are similar; there must be a “persuasive evidentiary showing” of that the goods and services are commercially related.