Rush North Shore Medical Centerv.Advocate Health Care Network

Trademark Trial and Appeal Board

Apr 21, 1999

No. 91102008 (T.T.A.B. Apr. 21, 1999)

Hearing: Paper No. 24
May 19, 1998 EWH
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT OF THE TTAB APRIL 21,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Rush North Shore Medical Center
v.
Advocate Health Care Network
_____
Opposition No. 102,008
to application Serial No. 74/684,657
filed on June 5, 1995
_____
Gerald T. Shekleton of Welsh & Katz, Ltd. for Rush North
Shore Medical Center.
Ralph H. Lane of Foley & Lardner for Advocate Health Care
Network.
______
Before Cissel, Hanak and Walters, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Advocate Health Care Network (applicant) seeks to
register HEALTH CARE WITH A WHOLE NEW ATTITUDE in typed
drawing form for “health care services and hospital
services.” The application was filed on June 5, 1995 with a
claimed first use date of April 26, 1995.
Opposition No. 102,008
2
Rush North Shore Medical Center (opposer) filed a
notice of opposition alleging that since prior to 1995, it
has made continuous use of the mark NEW ATTITUDE “in
connection with its publications and health care services.”
(Notice of Opposition paragraph 3).
Continuing, opposer alleges that “applicant’s HEALTH CARE
WITH A WHOLE NEW ATTITUDE mark is confusingly similar to
opposer’s NEW ATTITUDE mark.” (Notice of Opposition
paragraph 10).
In response, applicant denied the pertinent allegations
of the notice of opposition, and in particular, applicant
denied the allegations contained in paragraphs 3 and 10 of
the notice of opposition.
Both parties filed briefs and were present at a hearing
held in May 19, 1998. The record in this case is summarized
at pages 2-3 of opposer’s brief and at pages 7-9 of
applicant’s brief.
The parties are in agreement that the sole issue in
this proceeding is whether there is a likelihood of
confusion resulting from the contemporaneous use of
opposer’s mark and applicant’s mark. (Opposer’s brief page
4; applicant’s brief page 13). There is no dispute that
opposer has made continuous use of its mark NEW ATTITUDE
since 1992, and that applicant has made continuous use of
its mark HEALTH CARE WITH A WHOLE NEW ATTITUDE since 1995.
Opposition No. 102,008
3
In any likelihood of confusion analysis, two key
considerations are the similarities of the goods or services
and the similarities of the marks. Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976)(“The fundamental inquiry mandated by Section 2(d) goes
to the cumulative effect of differences in the essential
characteristics of the goods [or services] and differences
in the marks.”).
Considering first the goods and services, we note that
while opposer has alleged that it has used its mark NEW
ATTITUDE in connection with publications and health care
services, opposer’s vice president for marketing (Michael J.
Kearns) testified as follows at page 30 of his deposition:
Q. Now, after the premier issue in
‘92-93 up to today have you used the
“New Attitude” phrase in connection with
anything other than these pamphlets or
brochures?
A. Well, with seminars, with talks.
Q. And these seminars and talks would
have all been related to women’s
health issues?
A. Yes. Now, we may – I should say we
may have promoted in a particular
issue not necessarily a women’s health
topic, but if we happened to be doing it
at [opposer’s] Medical Center during
that time period, we may have listed
it as a possible topic.
Thus, the record does not show that opposer has used
NEW ATTITUDE as a service mark directly in connection with
Opposition No. 102,008
4
the rendering of health care services, as opposer alleges in
paragraph 3 of its notice of opposition. Nevertheless,
because opposer is a medical center (hospital) and because
opposer uses its NEW ATTITUDE pamphlets and seminars to
promote its health care services, we find that the public
would associate opposer’s mark NEW ATTITUDE with health care
services, despite the fact that opposer has not made
technical service mark use of NEW ATTITUDE in connection
with health care services.
In short, we find that opposer’s goods and services
(pamphlets and seminars designed to promote opposer’s health
care services) and applicant’s services as set forth in the
application (health care services and hospital services) are
closely related.
Turning to a consideration of the marks, we note at the
outset that when the goods or services are closely related,
a lesser degree of similarity in the marks is required for a
finding of likelihood of confusion. Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992). However, having said the
foregoing, we find that the marks of the parties are
dissimilar enough such their use on closely related goods
and services is not likely to result in confusion.
Marks are compared in terms of their visual appearance,
pronunciation and connotation. In terms of visual
Opposition No. 102,008
5
appearance and pronunciation, opposer’s two word mark and
applicant’s seven word mark are quite dissimilar. See
Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432 F.2d
1400, 167 USPQ 529, 530 (CCPA 1970)(“The difference in
appearance and sound of the marks in issue [PEAK and PEAK
PERIOD] is too obvious to render detailed discussion
necessary. In their entireties they neither look nor sound
alike.”); Lever Bros. Co. v. Barcolene Co., 463 F.2d 1107,
174 USPQ 392, 393 (CCPA 1972) (“While appellant points out
some similarities between the word ALL as it is used by both
parties, inspection of the two marks [ALL CLEAR! and ALL]
also shows obvious differences. Considering appellee’s mark
in its entirety, we are convinced that there is no
likelihood of confusion” even when both marks are used on
identical products, namely, household cleaners.); In re
Hearst Corp., 982 F.2d 493, 25 USPQ2d 1238 (Fed. Cir.
1992)(The Court found no likelihood of confusion resulting
from the contemporaneous use of VARGAS and VARGA GIRL on
identical goods, namely, calendars.).
Thus, despite the fact that fact that opposer’s goods
and services and applicant’s services are closely related,
we find that opposer’s mark and applicant’s mark are so
dissimilar in terms of visual appearance and pronunciation
that there simply is no likelihood of confusion. In this
regard, we note that in the Lever Bros. and Hearst cases,
Opposition No. 102,008
6
the goods are not merely closely related, they were instead
absolutely identical, inexpensive consumer items (household
cleaners and calendars).
In terms of connotation, there is some similarity in
the marks because both consist of or contain the words NEW
ATTITUDE. However, according to the evidence of record, the
term “new attitude” is highly suggestive of the goods and
services of the parties in that it informs individuals that
they should adopt a new attitude about their lifestyles
which promotes good health and/or that the health care
providers (opposer and applicant) have themselves adopted a
new attitude about rendering health care to patients in a
more caring fashion. Moreover, Mr. Kearns – opposer’s vice
president for marketing – testified that previously he had
“worked in the advertising agency business for 15 years and
[he had] always understood the importance of the word ‘new’
as a marketing concept to people, however it’s used. People
are generally – it depends upon the product, but people are
generally interested in new things.” (Kearns deposition
page 12). Moreover, when asked if he had ever heard the
phrase “new attitude” prior to this opposition proceeding,
Mr. Kearns replied as follows at page 65 of his deposition:
A. Oh, sure.
Q. In what way?
A. Somebody has a “new attitude” about
about something.
Opposition No. 102,008
7
Q. In a very generic sense, explaining
a change of the attitude they had
before?
A. Right.
The record establishes that the phrase “new attitude”
is a very common phrase which, when used in conjunction with
opposer’s goods and services and applicant’s services, is
highly suggestive and indeed laudatory. It has long been
held that “the mere presence of a common, highly suggestive
portion is usually insufficient to support a finding of
likelihood of confusion.” Tektronix, Inc. v. Daktronics,
Inc., 534 F.2d 915, 189 USPQ 693, 694 (CCPA 1976). This is
particularly true when, as is the case here, the two marks
are otherwise so dissimilar in terms of visual appearance
and pronunciation.
Decision: The opposition is dismissed.
R. F. Cissel
E. W. Hanak
C. E. Walters
Administrative Trademark
Judges, Trademark Trial and
Appeal Board