In Re ST. HELENA HOSPITAL
774 F.3d 747
Fed. Cir.2014Background
- St. Helena seeks registration of TAKETEN for health care services in class 44 (hospital-based weight and lifestyle health improvement program).
- The mark is challenged as likely to cause confusion with TAKE 10! (registered in ’657 and ’182) for printed materials in class 16 (and class 9 for videos).
- The PTO examiner and the Trademark Trial and Appeal Board (the Board) rejected TAKETEN under 15 U.S.C. § 1052(d) after applying the first four DuPont factors.
- St. Helena appealed to the Federal Circuit, arguing errors in the Board’s findings on similarity of marks, relatedness of goods/services, channels of trade, and consumer care.
- The court applies de novo review to law and substantial-evidence review to the Board’s factual findings and reverses and remands for further proceedings.
- The court reverses the Board’s refusal to register TAKETEN and remands for consideration consistent with the opinion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the marks are sufficiently similar to support confusion. | St. Helena argues differences (spelling, spacing, no exclamation) reduce similarity. | PTO argues marks are phonetically identical and similar in connotation. | Similar in overall commercial impression; but not dispositive to sustain rejection. |
| Whether the goods and services are sufficiently related to support confusion. | Printed materials and health services are not generally recognized as related sources. | Printed materials used with health programs are related or used together by consumers. | Not supported by substantial evidence; something more is needed to show relatedness. |
| Whether the channels of trade and consumer care support confusion. | Channels may be distinct; consumer care factors favor St. Helena pre-use. | Both are promoted online and to broad audiences; channels overlap. | Record lacking substantial evidence on channels and consumer care; factor neutral or unproven. |
| Whether, overall, the Board erred in refusing registration under DuPont factors. | Differences and consumer care negate likelihood of confusion. | Combination of factors supports likelihood of confusion. | Substantial evidence does not support the PTO’s refusal; reversal and remand. |
Key Cases Cited
- Shen Mfg. Co. v. Ritz Hotel, Ltd., 393 F.3d 1238 (Fed. Cir. 2004) (mere use together does not prove relatedness; something more required)
- In re Coors Brewing Co., 343 F.3d 1340 (Fed. Cir. 2003) (something more needed to show relatedness when goods/services not well-established as related)
- Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261 (Fed. Cir. 2002) (likelihood of confusion is a question of law with factual underpinnings; substantial-evidence review applies)
- In re Shen Manufacturing Co., 393 F.3d 1238 (Fed. Cir. 2004) (addressed relatedness and the need for more than mere shared use of goods/services)