HZNP LLC

Trademark Trial and Appeal BoardJul 18, 2018

No. 86818542 (T.T.A.B. Jul. 18, 2018)

This Opinion is Not a Precedent of the TTAB Mailed: July 18, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re HZNP LLC _____ Serial No. 86818542 _____ Tiffany Scott Connors and Frances M. Jagla of Lane Powell PC for HZNP LLC. Christopher Buongiorno, Trademark Examining Attorney, Law Office 102, Mitchell Front, Managing Attorney. _____ Before Zervas, Wellington and Gorowitz, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: Applicant, HZNP LLC, seeks registration on the Principal Register of the standard character mark HORIZONCARES for services described as “website providing information to patients relating to the prevention, diagnosis, and treatment of pain, inflammation and rare diseases” in International Class 44.1 The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that 1 Application Serial No. 86818542 was filed on November 9, 2015, based upon Applicant’s allegation of November 9, 2015 as the date of first use of the mark anywhere and in commerce, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). Serial No. 86818542 - 2 - Applicant’s mark, when used in connection with the identified services, so resembles the following three registered marks as to be likely to cause confusion, mistake or deception: HORIZON and , owned by the same entity, for: Comprehensive health care benefit programs, including those rendered through a health maintenance organization, namely, physician, dental, hospital, home health care, preventative health treatment, therapy, pharmacy, and ambulatory services in International Class 44;2 and HORIZON PLANNING (disclaimer of PLANNING) for: Providing a website featuring healthcare information on end-of-life care topics, including advance directive, living will, hospice care, palliative care, durable medical power of attorney, physician order for life-sustaining treatment, and other issues related to end-of-life care in International Class 44.3 When the refusal was made final, Applicant filed a request for reconsideration and then appealed. After the Examining Attorney denied the request for reconsideration, the appeal resumed and has been briefed. We affirm the refusal to register. 2 Registrations Nos. 4002583 and 4002584, respectively, issued on July 26, 2011 and are currently owned by Horizon Healthcare Services, Inc. after an assignment of ownership from Blue Cross and Blue Shield of New Jersey. Section 8 affidavits accepted; Section 15 affidavits acknowledged. The registrations also describe services in International Class 35. 3 Registration No. 4937959 issued on January 10, 2006. Section 8 affidavit accepted; Section 15 affidavit acknowledged. Renewed. The registration also describes educational and computer goods and services in International Classes 16, 41, and 42. Serial No. 86818542 - 3 - A. Evidentiary Objection As a preliminary matter, the Examining Attorney has objected to Applicant’s attachment of materials to its appeal brief because they were not previously submitted.4 Applicant did not respond to this objection in its reply brief. The record in the application should be complete prior to the filing of an appeal. Trademark Rule 2.142(d). Thus, to the extent that materials were submitted for the first time with Applicant’s brief, the Examining Attorney’s objection thereto on the ground of untimeliness is sustained, and we give no consideration to them.5 B. Likelihood of Confusion When the question is likelihood of confusion, we analyze the facts as they relate to the relevant factors set out in 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 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the relatedness of the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). “Not all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Coach 4 19 TTABVUE 3-4. 5 Some of the materials attached to the brief may have been previously and timely submitted, either with Applicant’s request for reconsideration (4 TTABVUE) or its responses filed on September 9, 2016 and April 3, 2017; if so, these materials will be considered. Nevertheless, Applicant is reminded that, as a matter of general practice, evidence that is timely properly introduced during the prosecution of an application should not be resubmitted as exhibits to appeal brief. Trademark Board Manual of Procedure (TBMP) §§ 1203.01 and 1203.02(e) (June 2017). Serial No. 86818542 - 4 - Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)). 1. Similarity/Dissimilarity of the Marks We first consider Applicant’s mark HORIZONCARES and the registered marks: HORIZON, , and HORIZON PLANNING, and compare them “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). The marks must be considered “in light of the fallibility of memory.” San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1 (CCPA 1977)). The proper focus is on the recollection of the average consumer, who retains a general rather than specific impression of the marks. Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Although we must compare each of the registered marks individually vis-à-vis Applicant’s mark, a key characteristic of each mark is that the term HORIZON appears first and is the dominant element. This makes Applicant’s mark visually and aurally very similar to each of the cited marks. In terms of connotation or commercial impression, the term HORIZON has no demonstrated meaning and appears to arbitrary in the context of the involved services. Serial No. 86818542 - 5 - The addition of second term or design in some of the marks, including Applicant’s, does not detract from the dominance or change the meaning of the term HORIZON in each mark. Rather, we agree with the Examining Attorney’s assessment that the secondary term, CARES, in Applicant’s mark, helps emphasize HORIZON. In the context of the services, the entire mark may be understood as HORIZON “cares about” (or understands) the ailments afflicting the patients who are visiting its website. Likewise, the disclaimed word PLANNING in the registered mark, HORIZON PLANNING, only describes or is highly suggestive of the Registrant’s services of helping other prepare for end of life situations, i.e., the Registrant can help one “plan” in these matters. It thus has less source-identifying significance. Further, the design element in the registered mark, , is not distinctive. Generally, unless the design element in a composite mark is highly unusual or makes a strong impression, it is the word portion that is more likely to indicate the origin of the services because the literal portion is what consumers use when referring to or requesting the goods and/or services. Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)). In sum, Applicant’s mark, HORIZONCARES, is very similar to each of the three registered marks, HORIZON, , and HORIZON PLANNING in sound, meaning, appearance and commercial impression. Accordingly, the du Pont factor of the similarity of the marks favors a finding of likelihood of confusion. Serial No. 86818542 - 6 - 2. Strength or Weakness of the Term HORIZON Applicant argues that:6 [B]ecause of the many other “horizon”-type marks (both registered with the Trademark Office and found through internet searches as seen in Applicant’s evidence), consumers would look to the secondary “CARES” element to distinguish “HORIZONCARES” from other marks like “HORIZON PLANNING.” Alternatively, consumers would look to the design element used in the “HORIZON” mark and consider that “HORIZON” is only used in connection with “BlueCross BlueShield” rather than on its own. In support, Applicant references and relies upon the following: • Copies of registrations and applications for marks containing the term HORIZON;7 • Copy of a registration owned by Applicant’s subsidiary (Reg. No. 3967638 for the mark HORIZON PHARMA for “Pharmaceutical preparations and substances for the treatment of pain, inflammation and gastrointestinal disorder”) and printouts from the subsidiary’s website.8 • Printouts from the websites of the owners of the cited registration and from the Bloomberg website giving a “company overview” of the one Registrant, Horizon Healthcare Services, Inc.;9 • Printouts from Google search engine based on searches for “horizon health” and “horizon healthcare.”10 Here, the record does not support Applicant’s argument that the term HORIZON is a weak source indicator based on consumer exposure to extensive third-party use of the term in marks in connection with the involved services. As to Applicant’s third- 6 17 TTABVUE 10. 7 Attached to Applicant’s response dated TSDR pp. 6-76. 8 Attached to Applicant’s Request for Reconsideration; 4 TTABVUE 15-20. 9 Id. at 9-14. 10 Id. at 21-24. Serial No. 86818542 - 7 - party registration evidence, there are actually only twelve, third-party, use-based registrations.11 Several of these registrations cover services that are unrelated to those involved in this proceeding, e.g., investment or medical research services.12 Four of them are owned by a single entity and involve marks with HORIZON as a secondary term.13 While some of the third-party registration evidence involves marks containing the term HORIZON and generally involve services in the field of medicine, they are few in number. Moreover, as we often point out, registrations are not evidence that the marks are in use or that the consuming public is even aware of the marks. See In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (“But Applicant's citation of third-party registrations as evidence of market weakness is unavailing because third-party registrations, standing alone, are not evidence that the registered marks are in use on a commercial scale, let alone that consumers have become so accustomed to seeing them in the marketplace that they have learned to distinguish among them by minor differences.”) See also AMF 11 Applicant, in its brief, relies on “20 official TSDR records as evidence showing a variety of trademark registrations for ‘horizon’-based marks in the health care industry. 17 TTABVUE 4. However, as the Examining Attorney pointed out in his brief (19 TTABVUE 6), two registrations were submitted in duplicate and three registrations (Reg. Nos. 3789873; 3724069; and 3724070) are owned by Horizon Healthcare Services, Inc., owner of two of the cited registrations (see Note 2). We further note that one registration (Reg. No. 3433888) is not based on use in commerce. Furthermore, Applicant submitted records involving two pending (now abandoned) applications, not registrations, and this has no probative value other than showing that the applications were filed. Olin Corp. v. Hydrotreat, Inc., 210 USPQ 62, 65 n.5 (TTAB 1981). 12 Reg. No. 3213328 (HORIZON COAST with design) involves investment services; Reg. Nos. 4548316 and 4548318 (HORIZON BIOADVANCE, with and without a design) covers medical research services. 13 Reg. Nos. 3832233; 2806841; and1911733 are for the mark SECUREHORIZONS; and Reg. No. 2084836 is for the mark WELLNESS HORIZONS. These four registrations are owned by Pacificare Health Systems. Serial No. 86818542 - 8 - Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973) (“The existence of these registrations is not evidence of what happens in the market place or that customers 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.”). The Google search results printouts have little, if any, persuasive value in terms of showing weakness of the term HORIZON. Internet search results, like that submitted here, generally has little probative value, because such a list does not show the context in which the term is used on the listed web pages. See In re Bayer AG, 488 F.3d 960, 967, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (deeming Google search results that provided very little context of the use of ASPIRINA to be “of little value in assessing the consumer public perception of the ASPIRINA mark”); In re Tea and Sympathy, Inc., 88 USPQ2d 1062, 1064 n.3 (TTAB 2008) (finding truncated Google® search results entitled to little probative weight without additional evidence of how the searched term is used); In re Thomas, 79 USPQ2d 1021, 1026 (TTAB 2006) (rejecting an applicant's attempt to show weakness of a term in a mark through citation to a large number of Google® “hits” because the “hits” lacked sufficient context). In sum, on this record, we find that Applicant has not established that HORIZON is commercially weak due to third-party use of this or similar terms in connection with services like those involved in this proceeding. 3. Relatedness of the Services/Channels of Trade/Consumers Serial No. 86818542 - 9 - With regard to the services, channels of trade and classes of consumers, we must make our determinations under these factors based on the services as they are identified in the application and cited registrations. See In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). “This factor considers whether ‘the consuming public may perceive [the respective goods or services of the parties] as related enough to cause confusion about the source or origin of the goods and services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett Packard, 62 USPQ2d at 1004). In making our determination as to the relatedness, or not, of the involved services, we keep in mind that the services need not be identical or even competitive in order to find likelihood of confusion. Rather, the question is whether the services are marketed in a manner that “could give rise to the mistaken belief that [the services] emanate from the same source.” Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). See also Hewlett-Packard Co. v. Packard Press Inc., 227 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (“Even if the goods and services in question are not identical, the consuming public may perceive them as related enough to cause confusion about the source or origin of the Serial No. 86818542 - 10 - goods and services.”); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1109 (2007). Applicant’s services, again, are described as a “website providing information to patients relating to the prevention, diagnosis, and treatment of pain, inflammation and rare diseases.” We compare these services with those recited in the cited registrations. Reg. Nos. 4002583 and 4002584 As to these two cited registrations, owned by the same entity, the services are described as “comprehensive health care benefit programs, including those rendered through a health maintenance organization...” The Examining Attorney argues that the same person providing Registrant’s services may also render services like Applicant’s thus showing a relationship between them. In support, the Examining Attorney submitted printouts from websites of third parties, such as Aetna, Blue Cross Blue Shield, Cigna, Alina Health, Ohio Health, Fallon Health, and Kaiser Permanente.14 We agree with the Examining Attorney that there is a demonstrated relationship between Applicant’s informational services and Registrant’s health care benefit programs. That is, the website evidence shows that health maintenance organizations, such as Aetna, Blue Cross Blue Shield and the others, provide not only health care benefits but also offer a wide variety of preventive and medical treatment 14 Attached to Examining Attorney’s Office action, issued on November 9, 2017, denying the request for reconsideration. 5-15 TTABVUE. Serial No. 86818542 - 11 - information. For example, Kaiser Permanente touts the availability of its health care plans and doctors on its website, as well as providing specific information on the diagnosis and treatment of chronic pain and rare disorders, like Gestational Trophoblastic Disease.15 Cigna, another large health care organization, also provides information on the prevention, diagnosis, and treatment of pain and various diseases. The website evidence shows that consumers are accustomed to receiving information like that provided by Applicant as well as health care benefits from a single source. As to trade channels, the website evidence also demonstrates that Applicant’s services (which are Internet-based) and the Registrant’s services may be advertised or rendered via the same website. In other words and by way of example, a consumer seeking health care benefit services and additional information regarding chronic pain or a rare disease may peruse the Cigna website for said services. The services may be offered to the same class of consumers, namely, those interested in receiving health care services and information regarding the prevention, diagnosis and treatment of pain and rare diseases. Accordingly, as to the two-cited registrations (Reg. Nos. 4002583 and 4002584), we find the services covered therein are related to Applicant’s services. We further find the respective services may be offered or advertised in the same trade channel, i.e., via a website of health maintenance organization, and to the same class of consumers. These factors therefore weigh in favor of finding a likelihood of confusion with regard to the two registrations. 15 11-14 TTABVUE. Serial No. 86818542 - 12 - Reg. No. 4937959 This cited registration covers various different goods and services (see Note 3); for purposes of the refusal, the Examining Attorney focused on this registrant’s services described as “a website featuring healthcare information on end-of-life care topics, including advance directive, living will, hospice care, palliative care, durable medical power of attorney, physician order for life-sustaining treatment, and other issues related to end-of-life care.” Thus, both Applicant’s services and this registrant’s services are provided by means of a website and include the provision of information – Applicant’s information relating to the prevention, diagnosis, and treatment of pain, inflammation and rare diseases and registrant’s information concerning topics that include hospice and palliative care. The Examining Attorney relies here, too, on third-party website evidence. Specifically, he has submitted printouts from five different websites that provide information concerning rare diseases or disorders, as well as hospice and palliative care information.16 For example, the Caregiver Action Network website (www.caregivers.org) clearly provides information regarding the care of ones with rare diseases, but also includes information and articles regarding palliative and hospice care.17 Another website, The Palliative Hub (www.childrenspalliativehub.com) clearly specializes in palliative care for children but also includes sections with information that involves “rare conditions” and 16 Attached to Examining Attorney’s Office action, issued on November 9, 2017, denying the request for reconsideration. 5-15 TTABVUE. 17 Id. at TSDR pp. 113-114. Serial No. 86818542 - 13 - “undiagnosed” conditions.18 This type of evidence demonstrates that the information that both Applicant and the registrant provide on their websites may be provided on a single website. A patient (or parent/ caregiver of a patient) with rare, and deadly disorder, will likely seek out both types of information. For the aforementioned reasons, we find Applicant’s services and this registrant’s services to also be related. To the extent that the same services may be rendered via the same website, we further find there is a common trade channel for these services. Accordingly, with respect to the refusal based on Reg. No. 4937959, the du Pont factors involving the relatedness of the services and their trade channels weigh in favor of likelihood of confusion. 4. Absence of Actual Confusion With Applicant’s Registration Applicant argues:19 Horizon Pharma, of which Applicant is the parent, and its affiliates have been using trademarks with a “horizon” element since 2011. Horizon Pharma owns a registration in the incontestable mark “HORIZON PHARMA.” Applicant’s latest HORIZONCARES mark is merely an outgrowth of its HORIZON PHARMA family of marks. Moreover, the existence of the registration for HORIZON PHARMA and the lack of any confusion from 2011 to present supports the conclusion that different services in the healthcare field can have “horizon”-element marks without confusion. Applicant appears to be asserting a prior registration defense in an ex parte proceeding. The prior registration defense is an affirmative defense in an 18 Id. at TSDR pp. 119-121. 19 17 TTABVUE 12. Applicant refers to Reg. No. 3967638, issued on May 24, 2011, for the mark HORIZON PHARMA (disclaimer of PHARMA) for “pharmaceutical preparations and substances for the treatment of pain, inflammation and gastrointestinal disorder” in International Class 5. Serial No. 86818542 - 14 - inter partes proceeding. It provides that if an applicant owns a registration for the same or substantially identical mark for the same or substantially identical goods, the opposer cannot be damaged by the registration of applicant's current application. See Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715, 717 (CCPA 1969). To be successful, the prior registration defense requires that goods or services in the application be identical, or nearly so, to the goods or services in the prior registration. See Morehouse Mfg. Corp. v. J. Strickland & Co., supra (“there is no added damage from the second registration of the same mark if the goods named in it are in fact the same”). In any event, the registration owned by Applicant’s subsidiary could not compel a different result herein because the present application is for a different mark and covers services which differ from the goods (see Note 19) in the earlier registration. See In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994) (“This Office should not be barred from examining the registrability of a mark when an applicant seeks to register it for additional goods as it does here, even when the additional goods are closely related to those listed in a prior registration.”); see also In Florists' Transworld Delivery Inc., 106 USPQ2d 1784, 1791-92 (TTAB 2013) (“[I]t is well settled that neither the Board nor our primary reviewing court is bound by prior determinations by the Office and each case must be decided on its own merits.” (citing In re Nett Designs Inc., 236 F.3d 139, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)). Accordingly, the prior registration does not assist applicant in establishing that there is no likelihood of confusion. This factor is neutral. Serial No. 86818542 - 15 - C. Conclusion We find that Applicant’s mark HORIZONCARES is similar to the registered HORIZON (with and without a design) marks, owned by the same entity, as well as to the registered HORIZON PLANNING mark. We also keep in mind that, on the record before us, we find no weakness in the term HORIZON in connection with the involved services. As a result, and because we further find that Applicant’s services are related to the respective services described in the registrations, and may be found in the same trade channels offered to the same class of consumers, confusion is likely. Decision: The refusal to register based on likelihood of confusion under Section 2(d) of the Trademark Act is affirmed.