The Lincoln National Life Insurance Company

Trademark Trial and Appeal BoardMay 8, 2014

No. 85579621 (T.T.A.B. May. 8, 2014)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: May 8, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re The Lincoln National Life Insurance Company _____ Serial No. 85579621 _____ Nancy A. Smith, Lincoln National Corporation, for The Lincoln National Life Insurance Company. William T. Verhosek, Law Office 114 (K. Margaret Le, Managing Attorney). _____ Before Bucher, Ritchie, and Hightower, Administrative Trademark Judges. Opinion by Hightower, Administrative Trademark Judge: On March 26, 2012, applicant The Lincoln National Life Insurance Company applied to register the mark LINCOLN CARECOMPASS1 in standard characters. After amendment, the application identifies the following services, in relevant part: • International Class 35: Support services for critical illness policy claimants, namely, providing referrals in the fields of community support groups and child care; advice regarding health care providers, namely, providing referrals to health care providers, providing medical referrals; health care cost review and evaluating health and medical records for accuracy and cost management; 1 Application Serial No. 85579621, filed pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on allegations of first use anywhere and first use in commerce at least as early as August 22, 2011. Serial No. 85579621 2 • International Class 36: Critical illness insurance underwriting regarding critical illness insurance policies and wellness program benefits, namely, a critical illness assessment benefit that pays a cash benefit toward a covered assessment test and a family care benefit that pays child care expenses while a covered person is hospitalized for a covered illness; telephone hotline services for critical illness insurance policy claimants, namely, offering advice regarding personal finances; providing information in the field of insurance, namely, providing information about health insurance claims, insurance billing and fee negotiation; and • International Class 45: Telephone and hotline counseling services for critical illness policy claimants, namely, offering advice regarding emotional concerns and legal concerns; active case management services, namely, coordination of overall health care needs of critical illness policy claimants. The application also identifies services in International Classes 39 and 43. Registration of applicant’s services in International Classes 35, 36, and 45 has been refused on the ground of a likelihood of confusion with the mark CARECOMPASS. The following three registrations for the CARECOMPASS mark (in standard characters), all owned by Amerigroup Corporation, form the basis for the refusal: • Registration No. 4212592 (“’592 registration”), issued September 25, 2012, for: “Providing access to databases featuring health care information to and from the patient point-of-care to assist with the development and management of individualized care plans for members; Provision of access to data or documents stored electronically in central files for remote consultation in the field of health care information to and from the patient point-of-care to assist with the development and management of individualized care plans for members; Providing access to an electronic exchange of medical records across a nationwide health information network featuring health care information to and from the patient point-of-care to assist with the development and management of individualized care plans for members” in International Class 38; Serial No. 85579621 3 • Registration No. 4212594 (“’594 registration”), issued September 25, 2012, for: “Providing online non-downloadable software and online non-downloadable mobile computer software application for member- level clinical case management and the development and management of individualized care plans for members; providing a secured-access, members only website featuring technology that gives members the ability to access a database with individual care data and medical information, namely, prior case plans, lab data, care and disease management data, patient examination notes, diagnoses, information on treating providers, medications, prescriptions, ancillary and pharmacy data, financial reporting, prioritization of duties, service authorizations, benefits calculations, health plan and Medicare/Medicaid information; providing online non-downloadable software database for member-level clinical case management and the development and management of individualized care plans for members” in International Class 42; and • Registration No. 4223009 (“’009 registration”), issued October 9, 2012, for: “Computer software and mobile computer software application for member-level clinical case management and the development and management of individualized care plans for members; computer software and mobile computer software application providing access to individual care data and medical information, namely, prior case plans, lab data, care and disease management data, patient examination notes, diagnoses, information on treating providers, medications, prescriptions, ancillary and pharmacy data, financial reporting, prioritization of duties, service authorizations, benefits calculations, health plan and Medicare/Medicaid information” in International Class 9. Applicant timely appealed. Both applicant and the examining attorney filed appeal briefs. Analysis 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two Serial No. 85579621 4 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 argument or evidence. A. Similarity of the Marks We turn first 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). “The proper test is not a side- by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). Because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, we cannot dissect the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. See Stone Lion Capital Partners, LP v. Lion Capital LLP, __ F.3d ___, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); 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., Serial No. 85579621 5 667 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 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. See L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012). Applicant seeks to register the mark LINCOLN CARECOMPASS. The cited mark consists of the single word CARECOMPASS. Applicant’s mark thus incorporates the cited registered mark in its entirety, merely adding applicant’s house mark LINCOLN. Likelihood of confusion has been found where the entirety of one mark is incorporated within another. See, e.g., Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer design for men’s cologne, hair spray, conditioner and shampoo likely to cause confusion with CONCEPT for cold permanent wave lotion and neutralizer). There is no per se rule that the addition of a house mark is insufficient to differentiate confusingly similar marks. 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 Serial No. 85579621 6 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 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 addition of a trade name will make consumers think that products have a common origin or that the companies merged); Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1201-02 (TTAB 2007) (applying 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”). We find that the addition of the house mark LINCOLN does not serve to distinguish the marks. To the contrary, the structure of applicant’s mark suggests that its services are a variation of registrant’s. See Saks & Co. v. TFM Indus. Inc., 5 USPQ2d 1762, 1764 (TTAB 1987) (stating that the use of the phrase “By Fire Islander” in FOLIO BY FIRE ISLANDER “may only tend to increase and not decrease the likelihood of confusion” with FOLIO); In re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986) (SPARKS BY SASSAFRAS for women’s clothing is likely to cause confusion with SPARKS for shoes, boots and slippers); In re Riddle, 225 USPQ 630, 632 (TTAB 1985) (“Richard Petty’s Accu Tune” for automotive service centers specializing in engine tune-ups and oil changes likely to cause confusion with “Accutune” automotive testing equipment). Serial No. 85579621 7 Applicant argues that the cases cited by the examining attorney with respect to house marks are distinguishable because they involved goods in the same international class.2 Classification, however, is not a factor in our substantive analysis. The classification of goods and services by the USPTO is a purely administrative determination that has no bearing on the issue of likelihood of confusion. Jean Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993) (stating that classification is for the convenience of the Office and “wholly irrelevant to the issue of registrability under section 1052(d), which makes no reference to classification”). Nor do we agree with applicant that the addition of a house mark creates a likelihood of confusion only in connection with closely related goods or services. As noted supra, we must consider the similarities and differences between both the marks and the goods and services when analyzing whether confusion is likely. Indeed, where highly similar marks are involved, as is the case here, the degree of similarity between the parties’ goods and services required to support a finding of likelihood of confusion declines. See In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001) (“[T]he greater the degree of similarity between the applicant’s mark and the cited registered mark, the lesser the degree of similarity between the applicant’s goods or services and the registrant’s goods or services that is required to support a finding of likelihood of confusion.”). Finally, applicant argues that it owned a pending application for the mark LINCOLN CARECOMPASS at the time the applications that issued as the cited 2 Appeal Brief at 6. Serial No. 85579621 8 registrations were filed, but applicant’s mark was not cited against those registrations.3 Prior decisions in other applications are not binding on the Board, and each case must stand on its own merits. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165 n.3 (TTAB 2013). We find that the marks CARECOMPASS and LINCOLN CARECOMPASS are highly similar. The first du Pont factor weighs strongly in favor of a likelihood of confusion between the cited registered mark and both of applicant’s marks. B. Similarity of the Goods and Services We next consider the second du Pont factor, the similarity of the goods and services. The goods and services need not be identical or even competitive in order to support a finding of a likelihood of confusion. Rather, it is enough that the goods and services are related in some manner or that some circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circumstances which could give rise, because of the marks used therewith, to a mistaken belief that they originate from or are in some way associated with the same producer or that there is an association between the producers of the respective goods and services. In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); Schering Corp. v. Alza Corp., 207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corp. v. Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978). The issue is not whether purchasers would confuse the parties’ goods and services, but whether 3 See id. at 5. Applicant’s previous application is not of record, but the examining attorney states that it was expressly abandoned. Examiner’s Brief at unnumbered p. 9. Serial No. 85579621 9 there is a likelihood of confusion as to the source of the goods and services. In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984). Confusion may be likely to occur from the use of the same or similar marks for goods, on the one hand, and for services involving those goods, on the other. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988). It is well-established that we are bound by the identifications as written in the application and cited registration and cannot limit applicant’s services or registrant’s goods and services – or their geographic territories, channels of trade, or classes of customers – to what any evidence shows them to be. In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); In re Bercut- Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB 1986). It is sufficient for a finding of likelihood of confusion if relatedness is established for any item encompassed by the identification of goods within a particular class in an application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). We compare selected services recited by applicant in each class to the goods and services in the cited registrations. In International Class 35, applicant’s services include “advice regarding health care providers, namely, providing referrals to health care providers, providing medical referrals.” We find that these services are similar or related to registrant’s services “providing a secured-access, members only website featuring technology that gives members the ability to access a database with individual care Serial No. 85579621 10 data and medical information, namely, . . . information on treating providers” in the cited ’594 registration, as well as the following goods in the cited ’009 registration: “computer software and mobile computer software application providing access to individual care data and medical information, namely, . . . information on treating providers.” Also in International Class 35, we find that applicant’s “health care cost review and evaluating health and medical records for accuracy and cost management” are similar or related to the following goods and services in the cited registrations: • ’594 registration: “providing a secured-access, members only website featuring technology that gives members the ability to access a database with individual care data and medical information, namely, prior case plans, lab data, care and disease management data, patient examination notes, diagnoses, information on treating providers, medications, prescriptions, ancillary and pharmacy data, financial reporting, prioritization of duties, service authorizations, benefits calculations, health plan and Medicare/Medicaid information;” and • ’009 registration: “computer software and mobile computer software application providing access to individual care data and medical information, namely, . . . financial reporting, . . . benefits calculations, health plan and Medicare/Medicaid information.” Turning to the services identified by applicant in International Class 36, we find that applicant’s services “providing information in the field of insurance, namely, providing information about health insurance claims, insurance billing and fee negotiation” also are similar or related the goods identified immediately above in the cited ’009 registration: “computer software and mobile computer software application providing access to individual care data and medical information, Serial No. 85579621 11 namely, . . . financial reporting, . . . benefits calculations, health plan and Medicare/Medicaid information.” Finally, with respect to International Class 45, we find that applicant’s “active case management services, namely, coordination of overall health care needs of critical illness policy claimants” are similar or related to the following goods and services: • ’592 registration: “providing access to databases featuring health care information to and from the patient point-of-care to assist with the development and management of individualized care plans for members”; • ’594 registration: “providing online non-downloadable software database for member-level clinical case management and the development and management of individualized care plans for members”; and • ’009 registration: “computer software and mobile computer software application for member-level clinical case management and the development and management of individualized care plans for members.” We note that the examining attorney made of record the following definition of the noun “care plan”: strategies designed to guide health care professionals involved with patient care. Such plans are patient specific and are meant to address the total status of the patient. Care plans are intended to ensure optimal outcomes for patients during the course of their care.4 In light of this definition, we also find that the more broadly identified “members” and “patient[s]” referenced in the cited registrations encompass applicant’s “critical illness policy claimants.” 4 April 22, 2013 final Office action at 2, from medical-dictionary.thefreedictionary.com (citing MOSBY’S DENTAL DICTIONARY (2d ed. 2008)). Serial No. 85579621 12 In sum, we find that applicant’s services in International Classes 35, 36, and 45 are similar or related to goods and services in each of the cited prior registrations. The second du Pont factor supports a finding that confusion is likely. 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 LINCOLN CARECOMPASS for its services in International Classes 35, 36, and 45 and the cited registered mark CARECOMPASS. Decision: The refusal to register applicant’s mark for the services identified in International Classes 35, 36, and 45 is affirmed. The application will proceed to registration for the services in International Classes 39 and 43 in due course.