HCA-HEALTHONE LLC v. NORWOOD, 91182226 (TTAB 6-3-2011)
Opposition No. 91182226 against Serial No. 78904283United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: June 3, 2011Page 1
Julie Ann Gregory, Rebecca Grady Jennings and Julia Riehm
McGuffey of Middleton Reutlinger for HCA-Healthone LLC. Leslie C. Ruiter of Stokes Lawrence PS for Marel Norwood.
Before Quinn, Bucher and Mermelstein, Administrative Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Marel Norwood sought registration on the Principal Register of the mark now depicted as HEALTH ONESELF (instandard character format) for goods and services listed in the application, as amended, as follows:
“pre-recorded CDs, video tapes, laser disks and DVDs featuring information about health, physical health, mental health, emotional health, spiritual health, healthy lifestyles, nutrition, and exercise; audio cassettes, tapes, digital tapes, and discs featuring information about health, physical health, mental health, emotional health, spiritual health, healthy lifestyles, nutrition, and exercise; audio recordings featuring information about health, physical health, mental health, emotional health, spiritual health, healthy lifestyles, nutrition, and exercise; video recordingsPage 2
featuring information [about] health, physical health, mental health, emotional health, spiritual health, healthy lifestyles, nutrition, and exercise; computer software for application and database integration; computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; downloadable software for application and database integration; downloadable software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information” in International Class 9;
“magazine and newsletter featuring information about health, physical health, mental health, emotional health, spiritual health, healthy lifestyles, nutrition, and exercise; books and booklets in the fields of health, physical health, mental health, emotional health, spiritual health, healthy lifestyles, nutrition, and exercise; printed materials, namely, brochures and catalogs about health, physical health, mental health, emotional health, spiritual health, healthy lifestyles, nutrition, and exercise; posters” in International Class 16;
“online journals, namely, blogs featuring information about health, physical health, mental health, emotional health, spiritual health, healthy lifestyles, nutrition, and exercise; providing online information in the field of exercise; educational services, namely, consulting workshops and seminars in the fields of health, physical health, mental health, emotional health, spiritual health, healthy lifestyles, nutrition, and exercise; educational services, namely, educational demonstrations in the nature of audiovisual works; physical fitness consulting services; educational services, namely, conducting online displays and interactive exhibits and information online programs in the fields of health, physical health, mental health, emotional health, spiritual health, healthy lifestyles, nutrition, and exercise, and printable materials distributed therewith” in International Class 41;
“providing temporary use of online non-downloadable computer software for application and database integration; providing temporary use of online non-downloadable computer software in the field of knowledge management to host computer application software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; providing temporary use of online nondownloadable computer software in the field of knowledge management to host computer application software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information in the fields of health, physical health, mental health,Page 3
emotional health, spiritual health, healthy lifestyles, nutrition, and exercise” in International Class 42; and
“providing online information in the fields of health, physical health, mental health, emotional health, spiritual health, healthy lifestyles, nutrition; consulting services in the fields of health, physical health, mental health, emotional health, spiritual health, healthy lifestyles, nutrition” in International Class 44.[fn1]
HCA-Healthone LLC (hereinafter opposer) opposed this application on the ground that, as applied to applicant’s goods and services, the chosen mark so resembles opposer’s previously used and registered marks shown below, used on related goods and services:
as to be likely to cause confusion, to cause mistake, or to deceive under Trademark Act Section 2(d), 15 U.S.C. ? 1052(d).
By her answer, applicant denies the salient allegations of the notice of opposition. Prior to trial, applicant filed an amendment (not having the consent of opposer) to narrow the goods and services in its application to the following listing:
“pre-recorded CDs, video tapes, laser disks and DVDs featuring nonmedical information about anatomy, physiology and healthy lifestyles” in International Class 9;
“books, booklets, magazine, and newsletter featuring non-medical information about anatomy, physiology and healthy lifestyles” in International Class 16;Page 5
“educational services, namely, conducting workshops and seminars and providing online non-medical information about anatomy, physiology and healthy lifestyles” in International Class 41;
“providing temporary use of online non-downloadable computer software for organizing, storing, and sharing non-medical information about anatomy, physiology and healthy lifestyles” in International Class 42; and
“providing non-medical consulting services and online non-medical information about anatomy, physiology and healthy lifestyles” in International Class 44.
Upon further examination of these proposed amendments to the listing of goods and services, we find that “anatomy and physiology” are very specific areas of study that were not included in the earlier identification of goods and recitation of services, thereby exceeding the scope of the earlier listing. Hence, we find unacceptable applicant’s proposed amendment to the listing of goods and services, and the request to amend is denied. We will base our decision as to likelihood of confusion upon the goods and services in the application as published for opposition.
The Record
In addition to the pleadings, the file of opposed application Serial No. 78904283 is part of the record without any action by the parties. Trademark Rule 2.122(b), 37 C.F.R. ? 2.122(b). Additionally, on June 25, 2010, the parties filed a joint stipulation of facts and evidence,Page 6
along with substantial documentary evidence referred to as Exhibits A through GGG.
Factual Findings
Opposer, claiming initial use through a predecessor entity, has been using its HEALTH ONE mark for more than twenty-five years. Opposer currently operates seven hospitals and more than fifty outpatient care sites, with more than 9,000 employees and 3,000 affiliated physicians, serving more than 900,000 patients annually. See Stipulation of Facts and Evidence ## 1-3. Opposer has used its HEALTH ONE
mark in connection with a wide variety of hospital and healthcare services offered to the general public. These services include preventative medical and healthcare services; prenatal medical and healthcare services; mental healthcare services; obstetrics; medical and healthcare services for men, women, children and teens; and medical and healthcare services related to aging and health, alternative health, medications, rural outreach, sexuality, health screenings, counseling, fitness, nutrition, exercise, travel, and human anatomy; counseling services related to all of the foregoing; and the provision of information related to all of the foregoing.See Stip. ## 29, 35 and Exhibits E and F. Prior to applicant’s filing date, opposer was the official healthcare provider forPage 7
sports teams, arts companies, commercial, and entertainment facilities.
Applicant intends to provide information that encourages individuals to be involved in their own “self-care,” focusing on sixteen lifestyle / behavioral areas. Stip. ## 38 and 39. According to her business plans, her goods and services should be offered through partnerships with wellness promotion companies, health insurers, HMOs, medical practitioners, and through direct sales to benefits administrators at corporations and product managers of health insurers and HMOs. Stip. ## 41 and 43.
Standing and priority
Because opposer has made its registrations of record and has shown that the registrations are valid and subsisting and owned by opposer, opposer has established its standing to oppose registration of applicant’s mark. See Cunningham v.Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000).
Opposer’s priority is not in issue as to the marks and goods and services covered by opposer’s registrations made of record. See King Candy Co., Inc. v. EuniceKing’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).Page 8
Likelihood of Confusion
We turn then to the issue of likelihood of confusion. Our determination of likelihood of confusion must be based upon our analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. See In re E. I. duPont de Nemours Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the relatedness of the goods and/or services. See Federated Foods, Inc.v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
The salient question to be determined is whether there is a likelihood that the relevant purchasing public will be misled to believe that the goods and/or services offered under the involved marks originate from a common source. SeeJ.C. Hall Company v. Hallmark Cards, Incorporated,340 F.2d 960, 144 USPQ 435 (CCPA 1965); and The StateHistorical Society of Wisconsin v. Ringling Bros.-Barnum Bailey Combined Shows, Inc., 190 USPQ 25 (TTAB 1976). Opposer must establish that there is a likelihood of confusion by a preponderance of the evidence. The relevantPage 9du Pont factors in the proceeding now before us are discussed below.
As to the marks, we must compare opposer’s,
HEALTH ONE and1-877-HEALTHONE marks to applicant’s markHEALTH ONESELF in their entireties as to appearance, sound, connotation and commercial impression to determine the similarity or dissimilarity between them. Palm Bay Imports,Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). The test, under the first du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their commercial impression that confusion as to the source of the goods and/or services offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks.See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
It is applicant’s contention that opposer’sHEALTH ONE mark is weak and entitled to a narrow scope of protection. On the other hand, opposer argues that both marks begin with the word “Health” followed immediately by the term “One,” and inasmuch as the word “Oneself” is merely the reflexivePage 10
pronoun of the term “One,” the similarities outweigh the differences.
As to appearance and sound, we agree with opposer that the similarities between the respective marks outweigh the differences. As to connotation, applicant contends that itsHEALTH ONESELF mark is a play on the phrase “to help oneself.” However, it is not clear how widespread that perception might be. Moreover, opposer points out that applicant herself sometimes uses her proposed mark as one word, without spaces, hyphens or under-scores, accentuating the commonality of the word HEALTH immediately preceding the word/syllable ONE. Moreover, it would not be unreasonable for persons familiar with opposer’s marks to view applicant’s HEALTH ONESELF mark as applied to applicant’s self-help services as being a clever extension of opposer’s HEALTH ONE marks. That the results from searches on the Google search engine of the respective marks produced no overlapping hits is an irrelevant indicator by which to judge the nuances of the commercial impressions of these marks. Despite an arguable difference in meaning, we find that when considering the respective marks in their entireties, they create a similar commercial impression. Accordingly, this du Pont factor favors a finding of likelihood of confusion.Page 11
As to the du Pont factor focusing on the number and nature of similar marks in use on similar goods/services, although applicant has attempted to narrow the protection of opposer’s marks based upon the following listing of eighteen third-party registrations having the word “One” (or the numeral “1”) registered in connection with health-related goods and services, we find that this du Pont factor is, at best for applicant, a neutral factor.
As argued by opposer, of all these marks, only the first listed registered mark has the word “Health” followed immediately by the word “One,” and in that case it is registered in the context of use with nutritional supplements. While it is true that the other marks all contain the words “One” and “Health,” all have quite different commercial impressions than that created by applicant’s and registrant’s marks, and in most cases, involve very different goods and services. It should also be noted that multiples of the above marks, when substantially identical, are owned by the same party. In any event, third-party registrations are not evidence that such marks are in use or that consumers are familiar with them.AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269-70 (CCPA 1973). Apart from use analogous to a dictionary entry, these third-party registrations cannot be given great weight in determining the strength ofPage 16
a registration. Olde Tyme Foods Inc. v. Roundy’sInc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992). Finally, we find applicant’s information about third party common law uses to be of minimal probative value. Accordingly, we are not persuaded that opposer’s marks are entitled to only a narrow scope of protection.
Our inquiry into the second du Pont factor is whether the goods and/or services are so related such that a consumer may believe the marks indicate that the goods and/or services emanate from a single source. See On-line Careline Inc. v.America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc.,748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); and In reOpus One, Inc., 60 USPQ2d 1812 (TTAB 2001). As to the parties’ respective goods and services, the evidence shows that opposer’s marks are registered and used in connection with hospital and healthcare services; newsletters discussing general health issues; providing a medical advice line; physician referral services; preventative medical and healthcare services; prenatal medical and healthcare services; mental healthcare services; obstetrics; medical and healthcare services for men, women, children and teens; and medical and healthcare services related to aging and health, alternative health,Page 17
medications, rural outreach, sexuality, health screenings, counseling, fitness, nutrition, exercise, travel, and human anatomy; counseling services and the provision of information related to all of these goods and services. Stip. ## 29 and 35 and Exhibit E. The record shows that while opposer stands squarely within the traditional healthcare industry, its wide ranging services include programs of “self-care” focused on changing the behaviors and lifestyles of its consumers. Not surprisingly, we find that consumers expect to find a variety of information and services about healthy lifestyles from such a traditional, healthcare source.
Applicant argues that while opposer’s goods and services are offered directly to “individuals interested in or in need of medical and healthcare-related services,” she intends to “use `edutainment’ and social media and animated cartoon media to teach and communicate about healthy lifestyle choices,” with the thrust of her services directed to corporations and health promotion companies.
However, we are constrained to consider the listing of goods and services as presented, and applicant’s listing is not limited to goods and services rendered to “corporations and health promotion companies” or through “edutainment,” etc.Page 18
Furthermore, we find from this extensive record that wellness programs, including alternative and preventative healthcare, are an integral part of opposer’s offering of services and broad provision of information through websites, seminars, CDs and DVDs, and consulting services. For example, opposer’s alternative health topics include “Animals and your health” [HCA 008219], “Herbs and Supplements” [HCA 008227], “Melatonin” [HCA 008228-29], “Message Therapy” [HCA 008261-63] and “Visualization” [HCA 008276-77].
Applicant intends to educate about healthy lifestyle behaviors “that individuals can do for themselves as part of living, such as eating, drinking, breathing, sleeping and thinking.” However, opposer’s HEALTH ONE
and ubiquitous marks are used in the provision of information about mental health, sports medicine, grilling, fast food salads, being savvy in the supermarket, getting help for an angry kid, and pages dealing with the range of issues illustrated below:
Page 19
Given the breadth of opposer’s goods and services, we find that applicant’s goods and services are wholly encompassed within the listed offerings of opposer’s registrations and its even broader common law rights associated with its use of the HEALTH ONE and marks on healthcare services and the provision of health-related information from a time prior to applicant’s filing date.
As to trade channels, although applicant states that her intended customers will be corporations and health promotion companies, her listed goods and services contain no such limitation. Rather, the goods and services she intends to offer are the same types of preventative healthcare and wellness programs that opposer has offered since long before applicant’s filing date. In every case, the ultimate customer of these goods and services is the individual patient or consumer himself/herself.
Furthermore, there is nothing in the record to persuade us that ordinary healthcare consumers and those pursuing information on healthy lifestyles are especially knowledgeable or sophisticated. Hence, we must look to the average consumer exercising an ordinary standard of care in the choice of these goods and services.
Weighing all the relevant du Pont factors, particularly the relatedness of the respective goods and services and thePage 20
similarities between the marks, we conclude based upon a preponderance of the evidence that there would be a likelihood of confusion at such time as HEALTH ONE and HEALTHONESELF are used contemporaneously on the parties’ respective goods and services.
Finally, to the extent that we harbor any doubts as to the proper resolution of this case, we consider it appropriate to resolve such doubt against the newcomer (applicant) and in favor of the prior user and registrant (opposer). SeeIn re Pneumatiques, Caoutchouc Manufacture,487 F.2d 918, 179 USPQ 729 (CCPA 1973). See also TBC Corp.v. Holsa Inc., 126 F.3d 1470, 44 USPQ2d 1315 (Fed. Cir. 1997); and In re Hyper Shoppes, 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The opposition is sustained based upon the ground of likelihood of confusion under Section 2(d) of the Lanham Act, and registration to applicant as to all of her classes of goods and services is hereby refused.
[fn1] Application Serial No. 78904283 was filed on June 8, 2006 based upon applicant’s allegation of a bonafide intention to use the mark in commerce. No claim is made to the exclusive right to use the word “Health” apart from the mark as shown. [fn2] Registration No. 1307559 issued on November 27, 1984; renewed. No claim is made to the exclusive right to use the word “Health” apart from the mark as shown. [fn3] Registration No. 2334897 issued on March 28, 2000; renewed. No claim is made to the exclusive right to use the word “Health” apart from the mark as shown. [fn4] Registration No. 2439860 issued on April 3, 2001; renewed. No claim is made to the exclusive right to use the word “Health” apart from the mark as shown. [fn5] Registration No. 2904672 issued on November 23, 2004; Section 8 affidavit (six-year) accepted and Section 15 affidavit acknowledged. [fn6] Registration No. 2536202 issued on February 5, 2002; Section 8 affidavit (six-year) accepted and Section 15 affidavit acknowledged. [fn7] Registration No. 2867790 issued on July 27, 2004; Section 8 affidavit (six-year) accepted and Section 15 affidavit acknowledged. [fn8] Registration No. 2872598 issued on August 10, 2004; Section 8 affidavit (six-year) accepted and Section 15 affidavit acknowledged. [fn9] Registration No. 2833157 issued on April 13, 2004; Section 8 affidavit (six-year) accepted and Section 15 affidavit acknowledged. [fn10] Registration No. 2994617 issued on September 13, 2005. [fn11] Registration No. 3517540 issued on October 14, 2008. No claim is made to the exclusive right to use the words “Healthcare Solution” apart from the mark as shown. [fn12] Registration No. 3485555 issued on August 12, 2008. No claim is made to the exclusive right to use the words “Health Management Solutions, Inc.” apart from the mark as shown. [fn13] Registration No. 3477251 issued on July 29, 2008. No claim is made to the exclusive right to use the words “Health Management Solutions” apart from the mark as shown. [fn14] Registration No. 3544533 issued on December 9, 2008. No claim is made to the exclusive right to use the words “Health Group Inc.” apart from the mark as shown. [fn15] Registration No. 3473011 issued on July 22, 2008. No claim is made to the exclusive right to use the words “Health Group” apart from the mark as shown. [fn16] Registration No. 3394615 issued on March 11, 2008. No claim is made to the exclusive right to use the word “Health” apart from the mark as shown. [fn17] Registration No. 3501157 issued on September 16, 2008. [fn18] Registration No. 3701895 issued on October 27, 2009. No claim is made to the exclusive right to use the word “Health” apart from the mark as shown. [fn19] Registration No. 2802634 issued on January 6, 2004. No claim is made to the exclusive right to use the words “Health System” apart from the mark as shown. [fn20] Registration No. 2747701 issued on August 5, 2003; Section 8 affidavit (six-year) accepted and Section 15 affidavit acknowledged. No claim is made to the exclusive right to use the word “Health” apart from the mark as shown. [fn21] Registration No. 3085994 issued on April 25, 2006. [fn22] Registration No. 3145473 issued on September 19, 2006. [fn23] Registration No. 3394616 issued on March 11, 2008. No claim is made to the exclusive right to use the word “Health” apart from the mark as shown.