Friday, November 15, 2013

Test Your TTAB Judge-Ability: Are CARESTAT and STATCARE Confusable for Health Services?

The PTO refused registration of the mark CARESTAT for “medical services, namely, non-emergency and urgent out-patient health care services and occupational medicine services,” finding the mark likely to cause confusion with the registered mark STATCARE & Design, shown below, for “physician services, health services” [P.L.L.C. and the Caduceus design disclaimed]. Applicant Main Line appealed. How do you think this came out? In re Main Line Urgent Care Centers, LLC, Serial No. 85470562 (October 31, 2013) [not precedential].

The services: The Board agreed with Examining Attorney W. Wendy Jun, without objection from applicant Main Line, that the services are legally identical. Because the opposed application and cited registration have no limitations as to channels of trade or classes of consumers, the Board presumed, as it must, that they are the same for both marks.

The marks: Once again the Board noted that when the services are identical, a lesser degree of similarity is necessary to support a finding of likely confusion.

Main Line argued that the marks, in their entireties, engender different commercial impressions because of the different order of the words. Moreover, it asserted, the Caduceus design and the entity designation in the cited mark further distinguish the marks. Not surprisingly, the Board found the dominant portion of the cited mark to be STAT CARE, since P.L.L.C. is a legal entity designation that has no source-identifying significance and the Caduceus design is a commonly-known medical insignia. In any event, when a mark comprises a word and a design, the word is normally accorded more weight because purchasers would use the word to request the goods or services.

Main Line contended that in the cited mark the word STAT is emphasized, stressing the speed of the care given, while in the applied-for mark the emphasis is on care, stressing concern and empathy. The Board disagreed. It found that both marks suggest quick emergency care. Moreover, Main Line seeks to register its mark in standard character form, and its mark could be displayed in the same or similar font, color, and character as the cited mark. In fact, in applicant’s specimen of use, it displays the mark as CareSTAT, emphasizing the STAT portion. In short, the involved marks engender the same commercial impression.

As to the reversal of the elements, this may serve as a basis for distinguishing the marks “only if the transposed marks create distinctly different commercial impressions.” The cases cited by applicant to support its view were distinguishable because the marks in those cases were different. [both TOWN SQUIRES and SQUIRETOWN, and SILKY TOUCH and TOUCH O’ SILK, concern marks having distinctly different commercial impressions]. Here the commercial impressions of the two marks are the same.

As to the strength of the marks, the Board agreed that both are weak when used in connection with the identified services. However, even weak marks are entitled to protection against registration of a similar mark for closely related services.

Finally, even if consumers of the involved services would exercise extra care in their purchasing decisions, they are not immune from confusion:

Further, even if we accept that purchasers of urgent healthcare services exercise a heightened degree of care in purchasing such services, we are not persuaded that the degree of care will avoid a likelihood of confusion, since the fact that "the relevant class of buyers may exercise care does not necessarily impose on that class the responsibility of distinguishing between similar trademarks for similar goods. Human memories even of discriminating purchasers are not infallible."

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog note: How did you do?

Text Copyright John L. Welch 2013.


At 9:13 AM, Blogger Pamela Chestek said...

Hmmm. Nevertheless, I still maintain that there is a big difference between "intangible property" and "Property, intangible." It's all about the comma.

At 10:19 AM, Anonymous Anonymous said...

Actually, I thought the Applicant's cases were directly applicable. In these cases of reversing the order of two words I think confusion is generally unlikely. Have you ever heard anyone call General Electric - Electric General? I bet if you went through the database you would be hard pressed to find examples of a trademark owner registering a two word mark in forward and reverse order, which you would expect owners to do if confusion is so likely. Bad Mojo.

At 10:28 AM, Anonymous Anonymous said...

"the relevant class of buyers may exercise care does not necessarily impose on that class the responsibility of distinguishing between similar trademarks for similar goods."

If this true why is sophistication of the purchasers even a factor in the confusion analysis? I love how the Board essentially crosses sophistication off the list with statements like this one or the more common "sophistication of the purchasers does not mean sophistication in trademarks." Yes it does, or it would not be a factor in the confusion analysis.

How far would you get if you tried to argue related services does not mean the trademarks will be confused. That's pretty much the same argument. Aye Curumba!


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