High Degree of Consumer Care Key to Overcoming Trademark Registration Rejection

I often receive questions about the differences between trademark classes and whether a particular mark can be registered if someone else is using it for different goods and services.  Classes are used to designate the fields of goods and/or services covered by trademarks.  Trademarks are examined for the likelihood of confusion.  The likelihood of confusion is whether consumers are likely to confuse the source of the goods and services associated with the two marks.  This case discusses the Federal Court’s decision to allow the registration of similar marks for different goods and services.

The United States Patent and Trademark Office (PTO) trademark examiner rejected St. Helena Hospital’s trademark application for TAKETEN for the hospital’s 10-day residential health improvement program.  St. Helena identified its program as “health care services, namely, evaluating weight and lifestyle health and implementing weight and lifestyle health improvement plans in a hospital-based residential program” (Class 44).  The examiner thought that St. Helena’s TAKETEN mark created a likelihood of confusion with TAKE 10!, a mark registered for “pre-recorded videocassettes featuring physical activity and physical fitness promotion programs” (Class 9) and for “printed manuals, posters, stickers, activity cards and educational worksheets dealing with physical activity and physical fitness promotion programs” (Class 16).

St. Helena appealed the trademark examiner’s rejection of the mark to the Trademark Trial and Appeal Board.  The Board affirmed the examiner’s rejection.  St. Helena then appealed to the Federal Circuit Court of Appeals.  The Federal Circuit reversed the Board’s ruling, based on the dissimilarities between the mark owner’s good and services and the high degree of consumer care associated with St. Helena’s services. 

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