Holding Company of the Villages, Inc.Download PDFTrademark Trial and Appeal BoardApr 14, 2014No. 85596280 (T.T.A.B. Apr. 14, 2014) Copy Citation THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: April 14, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Holding Company of the Villages, Inc. _____ Serial No. 85596280 _____ Lori T. Milvain of Latham, Shuker, Eden & Beaudine, LLP for Holding Company of the Villages, Inc. Jonathan R. Falk, Trademark Examining Attorney, Law Office 111 (Robert L. Lorenzo, Managing Attorney). _____ Before Bergsman, Masiello, and Hightower, Administrative Trademark Judges. Opinion by Hightower, Administrative Trademark Judge: On April 12, 2012, applicant applied to register the mark on the Principal Register for: • “Real estate consultancy; real estate listing; real estate management services” in International Class 36; • “Education services, namely, providing classes, seminars, and workshops in the field of medicine and medical related services; physical fitness training services; providing fitness and exercise facilities” in International Class 41; and • “Hospitals; medical clinics; medical services; medical testing services, namely, fitness evaluation; providing assistance, fitness evaluation Serial No. 85596280 2 and consultation to individuals to help them make health, wellness and nutritional changes in their daily living to improve health” in International Class 44.1 During prosecution, applicant complied with a requirement to disclaim the word HEALTH apart from the mark as shown. Applicant also claims acquired distinctiveness in part under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), as to the wording THE VILLAGES based on at least five years’ use and on prior U.S. Registration Nos. 2339401 and 3915348. Registration of applicant’s services in International Classes 41 and 44 has been refused pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of a likelihood of confusion with the following seven registered marks, grouped by owner: A. DMB Sports Clubs Limited Partnership VILLAGE HEALTH CLUB & SPA (HEALTH CLUB & SPA disclaimed) for “health club services, namely, providing instruction and equipment in the field of physical exercise; physical fitness instruction; tennis facilities and instruction” in International Class 41.2 B. Village Health, Inc. (VILLAGE HEALTH HOLISTIC disclaimed) for “acupuncture services; chiropractic services; health care services, namely, wellness programs; 1 Application Serial No. 85596280, filed based on a bona fide intention to use the mark in commerce pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). The color green is claimed as a feature of the mark. The description of the mark states: “The mark consists of the stylized green words ‘The Villages Health.’” 2 Registration No. 3407926, issued April 8, 2008. Serial No. 85596280 3 massage and therapeutic shiatsu massage; medical counseling; midwife services; nutrition counseling” in International Class 44.3 C. DaVita Inc. (DISEASE MANAGEMENT disclaimed) for “health care services, namely, kidney disease management programs” in International Class 44.4 D. DaVita Healthcare Partners Inc. 1. VILLAGEHEALTH for “health care services, namely, kidney disease management programs” in International Class 44;5 2. VILLAGEHEALTH DISEASE MANAGEMENT (DISEASE MANAGEMENT disclaimed) for “health care services, namely, kidney disease management programs” in International Class 44;6 3. for “health care services, namely, kidney disease management programs” in International Class 44;7 and 4. DAVITA VILLAGEHEALTH for “health care services, namely, kidney disease management programs” in International Class 44.8 Goods and services in classes other than 41 and 44 are omitted from the above list. 3 Registration No. 3425159, issued May 13, 2008. 4 Registration No. 3779495, issued April 20, 2010. 5 Registration No. 3758353, issued March 9, 2010. 6 Registration No. 3779494, issued April 20, 2010. 7 Registration No. 3758496, issued March 9, 2010. 8 Registration No. 4016256, issued August 23, 2011. Serial No. 85596280 4 On July 15, 2013, at applicant’s request, its real estate services in International Class 36 were divided into a child application, which is not before us.9 Applicant timely appealed the refusal, and the appeal has been fully briefed. Proposed Amendment In its reply brief, applicant proposes to amend its identification of services to add the wording “for senior citizens in retirement communities,” as shown in bold red type below: • “Education services, namely, providing classes, seminars, and workshops in the field of medicine and medical related services for senior citizens in retirement communities; physical fitness training services for senior citizens in retirement communities; providing fitness and exercise facilities for senior citizens in retirement communities” in International Class 41; and • “Hospitals for senior citizens in retirement communities; medical clinics for senior citizens in retirement communities; medical services for senior citizens in retirement communities; medical testing services, namely, fitness evaluation for senior citizens in retirement communities; providing assistance, fitness evaluation and consultation to individuals to help them make health, wellness and nutritional changes in their daily living to improve health for senior citizens in retirement communities” in International Class 44. An analysis of likelihood of confusion under Section 2(d) includes a comparison of the goods or services in the refused application and cited registrations. We therefore must first address these proposed amendments to applicant’s identification of services. In re Paper Doll Promotions Inc., 84 USPQ2d 1660, 1662 (TTAB 2007). 9 Application Serial No. 85979735. Serial No. 85596280 5 It is improper to request amendment in a reply brief rather than by filing a separate request for remand that includes a showing of good cause. See In re Thomas White Int’l Ltd., 106 USPQ2d 1158, 1160 n.2 (TTAB 2013) (noting, with respect to applicant’s proposed amendment in its appeal brief, that “at this late juncture applicant would not be able to show good cause”); In re Major League Umpires, 60 USPQ2d 1059, 1060 (TTAB 2001); Trademark Trial and Appeal Board Manual of Procedure (TBMP) §§ 1205.01, 1209.04 (3d ed. rev. 2 June 2013). In any event, because the services identified in each of the cited registrations could be offered to “senior citizens in retirement communities,” it is clear that applicant’s proffered amendment would not overcome the Section 2(d) refusal. Applicant’s request to amend its recitation of services therefore is denied. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). We discuss each of the du Pont factors as to which applicant or the examining attorney submitted evidence. To the extent that Serial No. 85596280 6 any other du Pont factors for which no evidence was presented may nonetheless be applicable, we treat them as neutral. A. Similarity of the Services and Channels of Trade We first consider the similarity of the services and channels of trade, the second and third du Pont factors. The relevant services recited in the application and the cited registrations are summarized in the following chart: Applicant’s Selected Services Cited Registration Registrants’ Selected Services physical fitness training services; providing fitness and exercise facilities, in International Class 41 medical testing services, namely, fitness evaluation; providing assistance, fitness evaluation and consultation to individuals to help them make health, wellness and nutritional changes in their daily living to improve health, in International Class 44 1 VILLAGE HEALTH CLUB & SPA health club services, namely, providing instruction and equipment in the field of physical exercise; physical fitness instruction; tennis facilities and instruction, in International Class 41 education services, namely, providing classes, seminars, and workshops in the field of medicine and medical related services, in International Class 41 hospitals; medical clinics; medical services; medical testing services, namely, fitness evaluation; providing assistance, fitness evaluation and consultation to individuals to help them make health, wellness and nutritional changes in their daily living to improve health, in International Class 44 2 acupuncture services; chiropractic services; health care services, namely, wellness programs; massage and therapeutic shiatsu massage; medical counseling; nutrition counseling, in International Class 44 Serial No. 85596280 7 Applicant’s Selected Services Cited Registration Registrants’ Selected Services education services, namely, providing classes, seminars, and workshops in the field of medicine and medical related services, in International Class 41 hospitals; medical clinics; medical services; medical testing services, namely, fitness evaluation; providing assistance, fitness evaluation and consultation to individuals to help them make health, wellness and nutritional changes in their daily living to improve health, in International Class 44 3 health care services, namely, kidney disease management programs, in International Class 44 4 VILLAGEHEALTH 5 VILLAGEHEALTH DISEASE MANAGEMENT 6 7 DAVITA VILLAGEHEALTH Applicant’s services are identical in part to the services identified in each cited registration. With respect to the first cited registration, for example, applicant offers “physical fitness training services” and the cited registered services include “physical fitness instruction.” For the remaining registrations, applicant’s broadly worded “medical services” encompass the more narrowly worded services identified in the second cited registration (including “medical counseling”) and third through seventh cited registrations (“health care services, namely, kidney disease management programs”). Therefore, we presume that the services are offered in all normal channels of trade and are available to all potential classes of ordinary consumers, and that the channels of trade and classes of purchasers are the same. See Stone Lion Capital Partners, LP v. Lion Capital LLP, __ F.3d ___, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Citigroup Inc. v. Capital City Bank Group Inc., 637 Serial No. 85596280 8 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); American Lebanese Syrian Assoc. Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers.”). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this presumption in determining likelihood of confusion). Applicant’s broadly identified educational services in International Class 41 – “providing classes, seminars, and workshops in the field of medicine and medical related services” – are related on their face to the medical and health care services identified in the second through seventh cited registrations. The examining attorney also submitted third-party registrations and websites showing that some entities offering medical and health care services also offer similar educational services.10 For these reasons, we find that applicant’s services in International Classes 41 and 44 are identical in part and otherwise closely related to services identified in each of the seven cited registrations. Therefore, the second and third du Pont factors – the similarity of the services and channels of trade – weigh strongly in favor of a likelihood of confusion. 10 See June 7, 2012 Office action at 22-59; January 4, 2013 final Office action at 35-44. Serial No. 85596280 9 B. Similarity of the Marks We turn next to the du Pont likelihood of confusion factor focusing on “‘the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.’” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). In comparing the marks, we are mindful that the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether they are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods offered under the respective marks is likely to result. Midwestern Pet Foods Inc., v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d, No. 92-1086 (Fed. Cir. June 5, 1992). Because similarity or dissimilarity is determined based on the marks in their entireties, our analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. Stone Lion Capital Partners, LP, 110 USPQ2d at 1161; In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). On the other hand, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a Serial No. 85596280 10 mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. In re Nat’l Data Corp., 224 USPQ at 751. We focus on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012). Applicant’s mark is , with HEALTH disclaimed. The seven cited registered marks are: 1. VILLAGE HEALTH CLUB & SPA 2. 3. 4. VILLAGEHEALTH 5. VILLAGEHEALTH DISEASE MANAGEMENT 6. 7. DAVITA VILLAGEHEALTH We find that the dominant portion of applicant’s mark is the phrase VILLAGES HEALTH. The only other term in applicant’s mark is the definite article THE, which is insignificant as a source-identifier. See In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (“The addition of the word ‘The’ at the Serial No. 85596280 11 beginning of the registered mark does not have any trademark significance.”); In re Narwood Prods., Inc., 223 USPQ 1034, 1034 (TTAB 1984) (noting the insignificance of the word “the” in comparison of THE MUSIC MAKERS and MUSICMAKERS); Conde Nast Publ’ns Inc. v. Redbook Publ’g Co., 217 USPQ 356, 357 (TTAB 1983) (noting that the word “the” cannot serve as an indication of origin). In addition, applicant’s mark has only minimal design aspects: the color green and curled, exaggerated serifs on certain letters. 1. Registered Marks Owned by Village Health, Inc., DaVita Inc., and DaVita Healthcare Partners Inc. We find that the phrase VILLAGE HEALTH is the dominant portion of the second through sixth cited marks: , , VILLAGEHEALTH, VILLAGEHEALTH DISEASE MANAGEMENT, and . Each of these five marks either uses the phrase VILLAGE HEALTH alone, or combines it with one or more of the following: a design element, wording that is merely descriptive in association with the identified services (i.e., DISEASE MANAGEMENT), or much smaller subsidiary wording (i.e., HOLISTIC REALISTIC). Presentation in two of the marks of the phrase VILLAGEHEALTH without a space does not change their commercial impression; based on normal English pronunciation we find that consumers would view and verbalize VILAGEHEALTH as the two words VILLAGE HEALTH. See, e.g., In re ING Direct Serial No. 85596280 12 Bancorp, 100 USPQ2d 1681, 1690 (TTAB 2011) (finding “Person2Person Payment” generic despite deletion of spaces); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1025 (TTAB 2009) (finding that DESIGNED TO SELL does not create a distinct commercial impression from DESIGNED2SELL). In addition, the wording in composite word and design marks normally is accorded greater weight in the likelihood of confusion analysis because consumers use the words to call for the services. See Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987). In the composite cited marks and , furthermore, the design appears to depict a stylized representation of a village, reinforcing the meaning of the term VILLAGE, which is common to applicant’s mark and the cited marks. We also note that there is no material difference between singular and plural forms of the same term. See, e.g., In re Belgrade Shoe Co., 411 F.2d 1352, 162 USPQ 227 (CCPA 1969); Wilson v. Delaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957); In re Sarjanian, 136 USPQ 307, 308 (TTAB 1962). Because the dominant portions of applicant’s mark and each of the cited marks are nearly identical, we find that applicant’s mark is similar in sight, sound, and meaning and makes a Serial No. 85596280 13 very similar commercial impression to five of the cited marks: , , VILLAGEHEALTH, VILLAGEHEALTH DISEASE MANAGEMENT, and . We separately address the seventh cited registration, DAVITA VILLAGEHEALTH. The mark in this registration combines the term VILLAGEHEALTH with DAVITA, which appears to be a trade name of the owners of five of the cited registrations. There is no per se rule that if two marks are confusingly similar, the addition of a house mark is not sufficient to differentiate them. New England Fish Co. v. Hervin Co., 511 F.2d 562, 184 USPQ 817, 819 (CCPA 1975). Nonetheless, it has often been said that likelihood of confusion will not be avoided when trade names and house marks are added to otherwise identical terms. “[S]uch addition may actually be an aggravation of the likelihood of confusion as opposed to an aid in distinguishing the marks so as to avoid source confusion.” In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (citations omitted) (finding applicant’s LE CACHET DE DIOR confusingly similar to CACHET). See also In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558, 559 (CCPA 1972) (stating that the addition of a trade name will make consumers think that the products have a common origin or that the companies merged); Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1201-02 (TTAB 2007) (applying Serial No. 85596280 14 principle that “the addition of a trade name or house mark or other such matter to one of two otherwise similar marks will not serve to avoid a likelihood of confusion”). Here, the shared terms VILLAGES HEALTH and VILLAGEHEALTH are virtually identical in both marks and not highly suggestive or merely descriptive. We find that the addition of the term DAVITA does not serve to make confusion unlikely by distinguishing applicant’s mark from the cited mark DAVITA VILLAGEHEALTH. For all of the reasons discussed above, we find applicant’s mark to be similar in commercial impression to all of the cited marks owned by Village Health, Inc., DaVita Inc., and DaVita Healthcare Partners Inc. Both have essentially the same dominant terms as applicant’s mark and are similar in sight, sound, and connotation. The first du Pont factor thus weighs in favor of a likelihood of confusion between applicant’s mark and these six cited registrations. 2. Registration Owned by DMB Sports Clubs Limited Partnership We reach a different conclusion with respect to the first cited registration, VILLAGE HEALTH CLUB & SPA, with HEALTH CLUB & SPA disclaimed. We find that consumers would view VILLAGE in this cited registered mark as a modifier for the common descriptive phrase HEALTH CLUB & SPA, rather than reading the terms VILLAGE HEALTH together. Therefore, we find that applicant’s mark has a different meaning and makes a different overall commercial impression from VILLAGE HEALTH CLUB & SPA, and the Serial No. 85596280 15 first du Pont factor does not weigh in favor of a likelihood of confusion between applicant’s mark and this cited registration. C. The Number and Nature of Similar Marks in Use on Similar Services The sixth du Pont factor is the number and nature of similar marks in use for similar goods or services. Applicant argues that third-party use renders VILLAGE a weak mark entitled to only a narrow scope of protection in association with goods or services related to healthcare.11 In support, applicant points to the seven cited registered marks owned by four different entities, as well as printouts from websites that appear to be associated with the cited marks and third-party sites for services incorporating the phrase VILLAGE HEALTH. The third-party sites are: • The Village Health Care Center, a skilled nursing facility in Missoula, Montana (villagehealthcare.com); • Village Health Care in Portland, Oregon (villagehc.com), services not specified; • The Village Health Care Center, a full-service health care facility in Broken Arrow, Oklahoma (villagehealthcare.net); • Village Health Wellness Spa in Smyrna, Georgia (villagehealth.net); • Village Healthcare and Rehabilitation (villagecarecenter.com), location and services not specified; • Village Health Care Services, Inc. in West Orange, New Jersey, a non-profit organization “dedicated to providing health, nutrition, and social services to disadvantaged people living in the country of Nigeria in West Africa” (villagehealthcareservices.com); and • Village Health Partners, family doctors in Plano, Texas (villagehealthpartners.com).12 11 See Applicant’s Brief at 14-16. 12 July 3, 2013 Request for Reconsideration at 26-31, 38-40. Serial No. 85596280 16 While the evidence indicates some third-party use of the phrase VILLAGE HEALTH, the examples and information provided about the use are limited. The probative value of this evidence also is limited because the website printouts do not establish how many relevant customers may have encountered the various third- party uses. In particular, the printouts alone do not establish that potential consumers have been so exposed to the phrase VILLAGE HEALTH that they have become accustomed to it and look to other elements for source identification in the healthcare field. See In re Thomas, 79 USPQ2d 1021, 1026 (TTAB 2006) (stating that, “without evidence as to the extent of third-party use, such as how long the websites have been operational or the extent of public exposure to the sites, the probative value of this evidence is minimal”). In addition, applicant included in its brief a chart listing six registered marks incorporating the term VILLAGE but not VILLAGE HEALTH. Not only is evidence submitted with an appeal brief untimely under Trademark Rule § 2.142(d), 37 C.F.R. § 2.142(d), but a mere list of registrations does not make the listed registrations of record. In re Jump Designs LLC, 80 USPQ2d at 1372; TBMP § 1208.02. Notwithstanding these evidentiary problems, such registrations are not evidence that the marks therein have been used at all, let alone used so extensively that consumers have become sufficiently conditioned by their usage that they can distinguish between such marks on the basis of minor differences. The probative value of third-party trademarks depends entirely on their usage. Palm Bay Imports Inc., 73 USPQ2d at 1693. Where, as here, the record includes no evidence about the Serial No. 85596280 17 extent of third-party uses, the probative value of this evidence is minimal. Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1561 (Fed. Cir. 2001). “The existence of [third-party] registrations is not evidence of what happens in the market place or that consumers are familiar with them nor should the existence on the register of confusingly similar marks aid an applicant to register another likely to cause confusion, mistake or to deceive.” AMF Inc. v. American Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). On the record in this case, we find insufficient support for applicant’s argument that the phrase VILLAGE HEALTH in the cited registrations is weak in the field of healthcare services and entitled to only a narrow scope of protection. Conclusion For the foregoing reasons, we find that, on balance, the relevant du Pont factors weigh in favor of a finding of likelihood of confusion between applicant’s mark and the marks in all cited registrations except VILLAGE HEALTH CLUB & SPA. With respect to that mark only, we find that the dissimilarity of the marks is dispositive. See Kellogg Co. v. Pack’em Enters. Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991). Decision: The examining attorney’s refusal to register applicant’s mark under Section 2(d) of the Trademark Act is reversed as to Registration No. 3407926 and affirmed as to Registration Nos. 3425159, 3779495, 3758353, 3779494, 3758496, and 4016256. Copy with citationCopy as parenthetical citation