Something More: Trademark Confusion Standard Clarified

Trademark applicants can run into trouble if their goods or services are considered similar to those of a third party’s registration, where the marks are also similar.  However, a recent ruling in In re St. Helena Hospital clarified the standard that trademark examiners should use to evaluate the similarity of two parties’ respective goods and services.

Registration denied

Under the mark TAKETEN, St. Helena Hospital conducts a 10-day residential health improvement program at its in-patient facility in St. Helena, California. The hospital applied to register the mark for its health care services.

The examiner from the U.S. Patent and Trademark Office (USPTO) refused to register the mark. The examiner cited a likelihood of confusion with the mark TAKE10! registered for “printed manuals, posters, stickers, activity cards and educational worksheets dealing with physical activity and physical fitness.” The Trademark Trial and Appeal Board (TTAB) upheld the examiner’s refusal, and the hospital appealed to the U.S. Court of Appeals for the Federal Circuit.

Court seeks relatedness

The appeals court largely rejected the TTAB’s findings regarding the factors analyzed to evaluate the likelihood of confusion. In particular, it found that the board had applied the incorrect standard when evaluating the “similarity or dissimilarity and nature of the goods and services” factor.

The TTAB concluded that consumers were likely to believe that health care services and similarly marked printed materials come from the same source or are somehow connected with or sponsored by a common company. The TTAB recognized that, in the context of food products associated with restaurants, the Federal Circuit requires “something more” than the fact that similar or identical marks are used. It asserted, though, that the something-more standard didn’t apply in this case.

As the appeals court explained, to rely on the similarity of the goods and services as a basis for refusing registration, the USPTO must show relatedness between the goods and services at issue. And the mere fact that goods and services are “used together” doesn’t establish relatedness without further evidence. In cases like this one, where the relatedness is obscure or less evident, the USPTO must show “something more.”

The appeals court acknowledged that it has previously applied the something-more standard in the context of restaurant services but added that the rule isn’t limited to that context. The rule also applies whenever the relatedness of the goods and services isn’t evident, well known or generally recognized.

In this case, the court concluded, the USPTO hadn’t shown that St. Helena’s services and the printed materials covered by the TAKE10! registration are generally seen as being related. The USPTO also failed to show “something more” to establish relatedness.

To be continued

Ultimately, the appeals court reversed the TTAB’s refusal to register and sent the case back for further proceedings consistent with its opinion. As of this writing, it remains to be seen whether the USPTO will eventually find “something more.” The good news for applicants in the meantime is that the ruling in this case could make it harder for examiners to deny registration on the basis of similar goods and services.