Bald Eagle Health Group, LLC

Trademark Trial and Appeal BoardSep 14, 2016

No. 86393297 (T.T.A.B. Sep. 14, 2016)

This Opinion is not a Precedent of the TTAB Mailed: September 14, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Bald Eagle Health Group, LLC _____ Serial No. 86393297 _____ Brian M. Taillon of McHale & Slavin, P.A., for Bald Eagle Health Group, LLC Odessa Bibbins, Trademark Examining Attorney, Law Office 118, Thomas G. Howell, Managing Attorney. _____ Before Quinn, Greenbaum and Heasley, Administrative Trademark Judges. Opinion by Heasley, Administrative Trademark Judge: Bald Eagle Health Group, LLC (“Applicant”) seeks registration on the Principal Register of the mark DETOX WITH DIGNITY (in standard characters) for “addiction treatment services; alternative medicine services, namely, detoxification services; drug and alcohol testing for substance and alcohol abuse; rehabilitation of alcohol and drug and narcotic addicted patients; rehabilitation patient care services which includes inpatient and outpatient care and counseling” Serial No. 86393297 - 2 - in International Class 44.1 The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(d) of the Trademark Act on the ground that it so resembles the registered mark PUTTING DIGNITY BACK IN DETOX (in standard characters) for “addiction treatment services” in International Class 442 as to be likely to cause confusion or mistake, or to deceive. 15 U.S.C. § 1052(d). When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. I. Analysis Our determination of likelihood of confusion under Section 2(d) of the Trademark Act is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Ind., Inc., __U.S. __, 135 S.Ct. 1293, 113 USPQ2d 2045, 2049 (2015). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In the course of applying these DuPont factors, we bear in mind the fundamental purposes of Section 2(d), which are to prevent consumer confusion as to commercial sources and relationships, and to protect registrants from damage caused by 1 Application Serial No. 86393297 was filed on September 12, 2014, based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as June 1, 2009. 2 Registration No. 4392221, issued on the Principal Register on August 27, 2013. Serial No. 86393297 - 3 - registration of confusingly similar marks. Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 198, 224 USPQ 327, 331 (1985); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161, 1163 (1995); DuPont, 177 USPQ at 566. To this end, we have considered each DuPont factor that is relevant and for which there is evidence of record, and have treated any other factors as neutral. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which we have evidence, we focus our analysis on those factors we find to be relevant.”). A. The Services, Channels of Trade, and Classes of Customers We begin by comparing Applicant’s and Registrant’s respective services, channels of trade, and classes of customers. DuPont, 177 USPQ 567. As the Examining Attorney observes, the subject application and registration identify identical services, “addiction treatment services” in International Class 44. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015) (Likelihood of confusion may be found if there is likely to be confusion with respect to any item in a class that comes within the identification of goods or services in the application and cited registration). Applicant’s identification of services elaborates further, specifying “alternative medicine services, namely, detoxification services; drug and alcohol testing for substance and alcohol abuse; rehabilitation of alcohol and drug and narcotic addicted patients; rehabilitation patient care services which includes inpatient and outpatient Serial No. 86393297 - 4 - care and counseling.”3 But all of these specific services are subsumed under and encompassed by Registrant’s more general identification of “addiction treatment services.” See In re Midwest Gaming & Entertainment LLC, 106 USPQ2d 1163, 1165 (TTAB 2013) (Registrant’s identified “restaurant and bar services” encompass and are legally identical to Applicant’s identified “bar services located in a casino”). The Examining Attorney has adduced examples of third-party addiction treatment services encompassing Applicant’s more specific types of services, such as detoxification and rehabilitation: • Edgewood offers addiction help and treatment, “detox,” inpatient and outpatient programs and long term, post-treatment support; • American Addiction Centers offers “a full spectrum of substance abuse treatment services,” including Medical Detox,” which is “an essential step in the treatment process,” followed by an immediate “transition from our detox program upon completion to one of our addiction treatment programs,” which may consist of a partial hospitalization program or an intensive outpatient program; • Serenity Acres treatment center offers medically supervised detox and individualized addiction and mental health treatment, holistic drug and alcohol treatment treatments, aftercare and relapse prevention.4 As these third-party examples demonstrate, the specific services Applicant identifies are legally identical to Registrant’s addiction treatment services, id., and are of a sort that may emanate from a single source under the same mark. Therefore, applicant’s and registrant’s services are considered identical for likelihood of confusion purposes. See, e.g., In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268- 3 See Office Action of July 11, 2015, p. 2. 4 Office Action of July 11, 2015, pp. 8-11. Serial No. 86393297 - 5 - 69, 1271-72 (TTAB 2009). Applicant does not contest this relatedness of services. Given the identity of the services, we presume that these services travel through all usual channels of trade—i.e., treatment and rehabilitation centers--and are offered to all normal potential purchasers—i.e., those seeking to recover from drug and alcohol addiction. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion); United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011) (where there are legally identical services, marketing channels of trade and targeted classes of consumers are the same). Hence, the second and third DuPont factors heavily favor finding a likelihood of confusion. B. The Marks Under the first DuPont factor, we compare Applicant’s and Registrant’s marks in their entireties, taking into account their appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at 567; Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Applicant’s mark is DETOX WITH DIGNITY and Registrant’s mark is PUTTING DIGNITY BACK IN DETOX. Because the registered mark is in standard characters, it may be depicted in any font size, style Serial No. 86393297 - 6 - or color that Applicant might adopt for its applied-for mark, which is also in standard characters. In re Strategic Partners Inc., 102 USPQ2d 1397, 1399 (TTAB 2012). Applicant argues that the two marks, considered in their entireties, “do not resemble each other to such a degree that requires barring registration of Applicant’s mark. To state the obvious, DETOX WITH DIGNITY is three words while PUTTING DIGNITY BACK IN DETOX is five words. While two of the words in the marks are the same, they are nevertheless in different order. The marks also have very different appearances and sounds.”5 But because the services are legally identical, the degree of similarity between the marks necessary to find likelihood of confusion declines. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) cert. denied, 506 U.S. 1034 (1992). Both marks pointedly refer to a key service, “DETOX”, which is defined as “treatment in a special hospital to help someone to stop taking drugs or drinking alcohol.”6 And both marks offer DETOX in the same manner, with DIGNITY. Applicant contends that this focus on the two shared words, DETOX and DIGNITY, improperly dissects the marks.7 But even when the marks are compared in their entireties, they convey the same meaning. As the Examining Attorney notes: “In other words, the marks convey the idea that providing treatment to stop taking 5 Applicant’s brief, 4 TTABVUE 10. 6 MacMillan Dictionary, Office Action of Jan. 1, 2015, p. 6.; Office Action of July 11, 2015, p. 7. 7 Applicant’s brief, 4 TTABVUE 12-13. Serial No. 86393297 - 7 - drugs or alcohol (DETOX) can be performed with respect (DIGNITY) for the individual.”8 “[T]wo marks may be found to be confusingly similar if there are sufficient similarities in terms of sound or visual appearance or connotation.” In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016)(emphasis in original, quoting Kabushiki Kaisha Hattori Seiko v. Satellite Int’l, Ltd., 29 USPQ2d 1317, 1318 (TTAB 1991), aff’d mem., 979 F.2d 216 (Fed. Cir. 1992)). In this case, the marks use the same key words to convey the same connotation. They are, in consequence, “sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between [Applicant and Registrant].” Coach Servs., 101 USPQ2d at 1721. For these reasons, the first DuPont factor, the similarity of the marks, also weighs in favor of finding a likelihood of confusion. C. Conditions of Purchase and Sophistication of Purchasers. The fourth DuPont factor is the conditions under which and buyers to whom sales are made, that is, “impulse” versus careful, sophisticated purchasing. DuPont, 177 USPQ at 567. Applicant argues that consumers making the significant, personal decision to send either themselves or a loved one for addiction treatment services would not do so lightly, on impulse, but would select a service provider carefully, avoiding confusion even if service providers’ marks were similar.9 In the decision on which Applicant relies, Elec. Design & Sales, Inc. v. Elec. Data Sys. Corp., 954 8 Examining Attorney’s brief, 9 TTABVUE 4. 9 Applicant’s brief, 4 TTABVUE 13-14. Serial No. 86393297 - 8 - F .2d 713 , 21 USPQ2d 1388, 1392-93 (Fed. Cir. 1992) the Federal Circuit found confusion unlikely between “EDS” for computer services and “E.D.S.” for power supplies and battery chargers because, among other reasons, the buyers of the parties’ products were sophisticated commercial purchasers in different fields. In this case, unlike that case, drug or alcohol addiction may afflict people in all walks of life, at all levels of education and income. We must therefore presume that Applicant’s and Registrant’s services are offered to both sophisticated and unsophisticated consumers. See Stone Lion, 110 USPQ2d at 1162-63 (“Stone Lion effectively asks this court to disregard the broad scope of services recited in its application, and to instead rely on the parties’ current investment practices …. [T]he Board properly considered all potential investors for the recited services, including ordinary consumers seeking to invest in services with no minimum investment requirement.”)(emphasis in original). Our focus must be on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014); i.am.symbolic, 116 USPQ2d at 1409. Even if these purchasers exercise great care in choosing an addiction treatment service, their task in making that selection is not aided, and is in fact impeded, by marks that are so similar in commercial impression, for legally identical services. “[C]areful purchasers who do notice the difference in the marks will not necessarily conclude that there are different sources for the goods, but will see the marks as variations of each other, pointing to a single source.” In re Hitachi High-Technologies Serial No. 86393297 - 9 - Corp., 109 USPQ2d 1769, 1774 (TTAB 2014). Thus, the legal identity of the services and the similarity of the marks outweigh any sophistication or care in consumers’ purchasing decisions. See HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff’d sub nom. Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990). The fourth DuPont factor is therefore neutral. D. Fame of the Cited Mark Applicant argues that an Internet search it conducted for the words “detox dignity” did not return any results for Registrant’s services, while Applicant’s services (under the mark “Sunrise Detox”) generated several hits.10 From this it infers that the fifth DuPont factor, fame of the prior mark, should weigh in favor of granting registration.11 However, evidence regarding fame of a registered mark is “not particularly significant in the context of an ex parte proceeding. … Moreover, it is not necessary that a registered mark be famous to be entitled to protection against a confusingly similar mark.” In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009)(punctuation and citations omitted). Applicant’s unscientific market research does not warrant depriving Registrant’s mark of the protection afforded under 15 U.S.C. § 1052(d). The fifth DuPont factor is therefore neutral. E. Absence of Actual Confusion Applicant asserts, under the seventh and eighth DuPont factors, that the subject 10 Response to Office Action, June 19, 2015, pp. 6, 9-10. 11 Applicant’s brief, 4 TTABVUE 14. Serial No. 86393297 - 10 - marks have coexisted in the marketplace since October 5, 2012, with no known incidents of actual confusion.12 However, this assertion is unsupported by any evidence. See In re Majestic Distilling Co., 65 USPQ2d at 1205 (“uncorroborated statements of no known instances of actual confusion are of little evidentiary value”). In an ex parte proceeding such as this: [A]pplicant’s assertion that it is unaware of any actual confusion occurring as a result of the contemporaneous use of the marks of applicant and registrant is of little probative value in an ex parte proceeding such as this where we have no evidence pertaining to the nature and extent of the use by applicant and registrant (and thus cannot ascertain whether there has been ample opportunity for confusion to arise, if it were going to); and the registrant has no chance to be heard from (at least in the absence of a consent agreement, which applicant has not submitted in this case). In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). Here, as in In re Kangaroos, we have no evidence of the extent and nature of Applicant and Registrant’s concurrent advertising, marketing and provision of their services under their respective brands, and cannot determine whether there has been an opportunity for confusion to have occurred. In any event, the test under Section 2(d) is not actual confusion, but likelihood of confusion. Id. Applicant’s argument is unavailing, and the seventh and eighth DuPont factors are neutral. F. Any Other Probative Fact The thirteenth DuPont factor is “any other established fact probative of the effect of use.” DuPont, 177 USPQ 567. Under this factor, Applicant argues that the Office 12 Applicant’s brief, 4 TTABVUE 14-15, Response to Office Action, June 19, 2015, pp. 6-7, Request for Reconsideration, Sept. 9, 2015, pp. 7-8. Serial No. 86393297 - 11 - has treated the subject application inconsistently with its other applications. Specifically, Applicant points out that it applied to register five marks on the Principal Register, all for the same services, yet three of the applications, for RECOVERY WITH DIGNITY, COUNSELING WITH DIGNITY, and SUNRISE CARES,13 proceeded toward registration, while SUNRISE DETOX14 and the subject mark, DETOX WITH DIGNITY, were refused registration.15 So peeved was Applicant at this perceived inconsistency that it sought a consistency review from the Office.16 The Examining Attorney mistakenly treated this request as a second request for reconsideration,17 but the Office, acknowledging the mistake, considered Applicant’s request and notified it that “It has been determined that consistent action is not warranted in this situation.”18 The Examining Attorney maintains that this renders the issue of consistency moot,19 and Applicant predictably disagrees.20 Each application must be considered on its own merits. Even if some other applications had characteristics similar to the subject application, their allowance does not bind the Board. In re Cordua Rests., Inc., 823 F.3d 594, 823 USPQ2d 1632, 1635 (Fed. Cir. 2016)(citing In re Shinnecock Smoke Shop, 571 F.3d 1171, 91 USPQ2d 13 Registration nos. 4878331, 4875414, and 4738393, respectively. 14 Application Serial no. 86393524, refusal to register affirmed by the Board on July 20, 2016. 15 Applicant’s brief, 4 TTABVUE 14-19. 16 Applicant’s Request for Consistency Review, Dec. 7, 2015. 17 Office Action of March 5, 2016. 18 Applicant’s Notice of Trademark Consistency Review, Exhibit A, 15 TTABVUE 5. 19 Examining Attorney’s brief, 9 TTABVUE 7. 20 See Applicant’s Reply brief, 10 TTABVUE. Serial No. 86393297 - 12 - 1218 (Fed.Cir. 2009); In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed.Cir. 2009)). Applicant’s other marks are manifestly different from the subject applied-for mark. The first two listed above contain the words “WITH DIGNITY,” but not “DETOX,” which lessens the likelihood of confusion with Registrant’s mark. Applicant’s third mark has nothing in common with the subject applied-for mark. And the fourth mark has the term “DETOX,” but not “WITH DIGNITY.” The treatment of these different marks does not assist us in comparing the subject mark with the registered mark, and is not the least bit “probative of the effect of use” under the thirteenth DuPont factor. This factor is therefore neutral. II. Conclusion Having carefully considered all of the arguments and evidence of record, including the evidence and arguments that we have not specifically discussed herein, and all relevant DuPont factors, we find that: Applicant’s and Registrant’s services, channels of trade, and classes of customers are the same; their marks are similar in appearance, sound, connotation and commercial impression; and these factors outweigh any sophisticated or careful purchasing decisions. All other factors are deemed neutral. On balance, we find that Applicant’s and Registrant’s marks so resemble one another as to be likely to cause confusion, or to cause mistake, or to deceive under Section 2(d) of the Trademark Act. Decision: The refusal to register Applicant’s mark DETOX WITH DIGNITY is affirmed.