The Federal Circuit made it clear this Tuesday that, when the relatedness of services and products isn’t widely recognized, the fact that they could be used together isn’t enough to prove their relatedness and “something more” is needed. The holding in In re St. Helena Hospital, No. 2014-1009, 2014 WL 7092576 (Fed. Cir. Dec. 16, 2014) is significant because it expanded the Federal Circuit’s “something more” standard beyond the restaurant, food, and beverage industries.
St. Helena Hospital had applied to register its service mark TAKETEN in connection with “[h]ealth care services, namely, evaluating weight and lifestyle health and implementing weight and lifestyle health improvement plans in a hospital-based residential program.” The Examining Attorney assigned to St. Helena’s application, however, refused to register the TAKETEN mark on grounds it would likely be confused with the registered mark TAKE 10! owned by Ilsi Research Foundation in connection with “printed manuals, posters, stickers, activity cards, and educational worksheets dealing with physical activity and physical fitness.” After the Trademark Trial and Appeal Board (TTAB) affirmed the Examining Attorney’s refusal to register, St. Helena Hospital appealed to the Federal Circuit, arguing that two marks are not likely to be confused. And it won.
To be sure, the Federal Circuit agreed with the Board that the mark TAKETEN is similar to the mark TAKE 10! in appearance, sound, meaning, and commercial impression and that the small differences in the two marks don’t distinguish them in a meaningful way. But what it did not agree with, however, was the Board’s claim that, just because the two marks are similar and their respective services and products could be offered by the same company, that the services and products are related enough to make confusion likely. According to the Federal Circuit, when the relatedness of services and products is “not evident, well known, or generally recognized,” the U.S.P.T.O. will need to establish “something more” than the mere fact that two marks are similar and that the services and products could be used together. In other words, the “something more” standard isn’t limited to only services and products in the food and beverage industries, as the Board had believed from In re Coors Brewing Co., 343 F.3d 1340 (Fed. Cir. 2003). The Federal Circuit also criticized the Board’s conclusory holding that consumers would exercise less care when analyzing printed materials they received after enrolling in St. Helena’s services as also lacking substantial evidence.
The Federal Circuit reversed the Board’s refusal to register, but remanded the proceeding to the Board for further action consistent with its holding.