Trademarks: You Don’t Own the Word – Just the Right to Avoid Some Market Confusion

by Dennis Crouch

On Patently-O, our primary focus is patent law, but sometimes we remember that the “Patent Office” is actually the United States Patent and Trademark Office (USPTO). The USPTO has two primary administrative appellate bodies – the Patent Trial & Appeal Board (PTAB) deciding patent issues and the Trademark Trial & Appeal Board (TTAB).

In the recent decision captioned In re St. Helena Hospital (Fed. Cir. 2014), the Federal Circuit has reversed the TTAB’s refusal to register St. Helena’s mark TakeTen.

If you want a lifestyle shift, St. Helena Hospital offers a ten-day residential program that they have branded TakeTEN.  When the hospital attempted to register the term as a trademark, the USPTO refused — finding that St. Helena’s TakeTEN to be confusingly similar to the registered mark “Take 10!” owned by the ILSI Foundation.  “Take 10!” is used in conjunction with various programs encouraging kids to exercise at least ten minutes per day.

Although trademark prosecution is generally termed a ‘registration’ process rather than ‘examination’, trademark examiners do conduct an examination to determine whether the proposed mark is registrable.  One fundamental question asked is whether the proposed mark is to confusingly similar to an already registered mark.  For that point, trademark examiners must determine whether the proposed mark 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).

Importantly, trademarks are registered for particular market areas.  The owners of the “Take 10!” mark do not generally own the phrase or control all of its uses. Rather, the trademark rights are focused on the particular market where the registrant uses its mark and serves to protect against customer confusion in that market.

“TakeTen” and “Take 10!” are – in the abstract – quite similar.  And, that reasonable conclusion is certainly an important factor in determining a likelihood of confusion. However, even identical marks are not necessarily confusing if used in different market areas.  More generally, the USPTO considers what have become known as the DuPont Factors:

(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.

Application of E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973).

In the appeal, the Federal Circuit found that the three final DuPont factors had not been proven with substantial evidence.

Of notable interest, the TTAB had noted that both TakeTEN and Take 10! were advertised over the Internet. In the appeal, the Federal Circuit quoted McCarthy on Trademarks in holding that fact “proves little, if anything, about the likelihood that consumers will confuse similar marks used on such goods or services.” Kinbook, LLC v. Microsoft Corp., 866 F. Supp. 2d 453, 470–71 n.14 (E.D. Pa. 2012) (quoting J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 24:53.50 (4th ed. Supp. 2011)).

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