YourCareUniverse, Inc.

Trademark Trial and Appeal BoardAug 17, 2016

No. 86505916 (T.T.A.B. Aug. 17, 2016)

This Opinion is not a Precedent of the TTAB Mailed: August 17, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re YourCareUniverse, Inc. _____ Serial No. 86505916 _____ Angela Holt of Loeb & Bradley Arant Boult Cummings, LLP for YourCareUniverse, Inc. Mark Sparacino, Trademark Examining Attorney, Law Office 103, Michael Hamilton, Managing Attorney. _____ Before Quinn, Kuczma, and Gorowitz, Administrative Trademark Judges. Opinion by Gorowitz, Administrative Trademark Judge: YourCareUniverse, Inc. (“Applicant”) seeks registration on the Principal Register of the mark YOURCARE in standard characters for, as amended: “Providing temporary use of on-line non-downloadable cloud computing software for use in the healthcare field, namely, software for managing, storing, analyzing, maintaining, processing, structuring, reviewing, building, editing, distributing, communicating, organizing, sharing, referencing, monitoring and integrating healthcare Serial No. 86505916 - 2 - information for healthcare providers, patients, and customer[s]” in Class 42.1 The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the ground that Applicant’s mark is merely descriptive of Applicant’s services. 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. Discussion. A mark is merely descriptive of goods or services within the meaning of Section 2(e)(1) if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); see also, In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a mark is merely descriptive is determined in relation to the goods or services for which registration is sought and the context in which the mark is used, not in the abstract or on the basis of guesswork. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, we evaluate whether someone who knows what the goods or services are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). 1 Application Serial No. 86505916 was filed on January 16, 2015, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Serial No. 86505916 - 3 - A mark need not immediately convey an idea of each and every specific feature of the goods or services in order to be considered merely descriptive; it is enough if it describes one significant attribute, function or property of the goods or services. See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). The determination that a mark is merely descriptive is a finding of fact and must be based upon substantial evidence. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007). It is the Examining Attorney's burden to show, prima facie, that a mark is merely descriptive of an applicant’s goods or services. In re Gyulay, 3 USPQ2d at 1010; In re Accelerate s.a.l., 101 USPQ2d 2047, 2052 (TTAB 2012). Applicant’s services are “cloud computing software for use in the healthcare field,2 for healthcare providers, patients, and customers”. The Examining Attorney must establish that YOURCARE (or YOUR CARE) describes one (or more) significant attribute, function or property of these services. We find that the Examining Attorney has met this burden. The Examining Attorney submitted a dictionary definition of the word “care” to establish that “care” is descriptive of an attribute and function of Applicant’s services. As defined in the American English version of the Oxford Dictionaries “care” is “the provision of what is necessary for the health, welfare, maintenance, and protection of 2 The specific uses of the software are “managing, storing, analyzing, maintaining, processing, structuring, reviewing, building, editing, distributing, communicating, organizing, sharing, referencing, monitoring and integrating healthcare information.” For the sake of brevity, we will refer to the specific uses as “dealing with healthcare information.” Serial No. 86505916 - 4 - someone or something … health care.”3 The Examining Attorney also submitted fourteen registrations for marks containing the word CARE in which CARE is disclaimed. See, for example: Reg. No. 4002633 – CARE ELSEWHERE Services: Computer software for use in medical and healthcare fields, namely, computer software for managing, acquiring, storing, analyzing, maintaining, processing, structuring, reviewing, building, editing, distributing, communicating, organizing, sharing, referencing, monitoring and integrating information, and accompanying manuals sold as a unit; computer software for automating clinical and administrative healthcare processes; Reg. No. 3693510 – CARE VISIBILITY Services: Computer software for managing workflow, resource utilization, and patient care in a health care setting; Reg. No. 3611361 – ANTHEM CARE COMPARISON Services: Providing an online tool, namely, providing temporary use of non-downloadable software that provides consumers with information about costs for various medical procedures; Reg. No. 3686032 – CARE OPPORTUNITIES Services: Application service provider, namely, providing, hosting, managing, developing, and maintaining a web- based application, web sites and databases that link medical information with medical claims data and the applicable standards of care, to provide clinical decision support for chronic medical conditions electronically; providing electronic clinical decision support, namely, providing a website featuring on-line non-downloadable software tools for making medical care decisions based on medical information, medical claims data, and standards 3 Definition attached to denial of request for reconsideration dated December 18, 2015 (TSDR p.12); www.oxforddictionaries.com/us/definition/americanenglish/care#CARE. Serial No. 86505916 - 5 - of care, designed to assist health professionals with decision making tasks; and Reg. No. 4240990 – EZ CARE Services: Computer software for facilitating case management, disease management, and utilization management in healthcare industry. These registrations reflect that the word “CARE” is considered descriptive by the USPTO when used in connection with software for healthcare related services. Third- party registrations can be used to demonstrate that a term may have a commonly accepted meaning. “Such third party registrations show the sense in which the word is used in ordinary parlance and may show that a particular term has descriptive significance as applied to certain goods or services.” Institut National Des Appellations D'Origine v. Vintners International Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992). See also In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006) (“Third-party registrations can be used in the manner of a dictionary definition to illustrate how a term is perceived in the trade or industry.”); Trademark Manual of Examining Procedure (TMEP) §§ 1213 and 1213.03(a) (April 2016) (disclaimers are required of unregistrable components, e.g., a merely descriptive term). Accordingly, since Applicant’s services consist of “cloud computing software for use in dealing with healthcare information,” the word “care” describes a significant attribute of the services. We look next at the additional element in Applicant’s mark, the preface “YOUR,” to determine whether it affects the descriptive nature of the mark. Applicant argues Serial No. 86505916 - 6 - that the Board should only rule the word YOUR to be descriptive if the services authorized by an applicant are personalized or customized and unique. See Appeal Brief, 10 TTABVUE 7. Applicant further argues that Applicant does not provide ‘personaliz[ed],’ ‘customized, [or] unique’ services to its customers. Applicant’s services are cloud-based computer software services, and those services do not focus on personal ownership or customization for individuals. Thus, to understand Applicant’s mark, consumers have to make a mental leap between an impression of their holistic healthcare and Applicant’s cloud-based computer software services, which coordinate a variety of healthcare information. Id., at 8-9. Applicant has misread the case law. It is not necessary for the recitation of services to specifically state that the services are personalized, customized, or unique to find that the mark YOURCARE is merely descriptive. Nor is it necessary to focus on the platform on which Applicant’s services are offered, cloud-based software. The question to be asked is whether the mark YOURCARE immediately conveys that the information provided through the cloud-based software is coordinated healthcare information provided to healthcare providers, patients, and customers. Applicant’s promotional materials answer this question: yes, it does. See for example: Serial No. 86505916 - 7 - Meet Your New CEO. The day of the patient is here. And she knows what she wants. Ready for change? YourCareUniverse™ is how you control the world of change occurring throughout healthcare. It’s about putting consumers and patients at the center of your organization’s strategy. YourCareUniverse is how you execute critical strategies, build loyalty, trust and affect the behavior of the patient, the person, and the population. In the Universe, patients achieve better outcomes. People live healthier lives. The population becomes more engaged – with you. A Cloud Platform that makes everything clear. YourCareUniverse’s cloud- based platform lets you attack the future with instantly- shared best practices from hundreds of hospitals across the country. It gives you access to descriptive, prescriptive and predictive analytics at nine different levels. Integration becomes easy, smart, virtual and drives everyone into the logical chain of patient, provider and consumer interaction. Serial No. 86505916 - 8 - Exhibit to Denial of Request for Reconsideration dated December 18, 2015, TSDR p. 26.4 As seen above, Applicant’s software provides coordinated healthcare information to healthcare providers, patients and customers. As such, the mark YOURCARE describes a significant attribute, namely access to and use of healthcare information by healthcare providers, patients and customers. Accordingly, Applicant’s services are merely descriptive thereof. Decision: The refusal to register Applicant’s mark YOURCARE is affirmed. 4 Applicant also alleges that its mark is not descriptive because it is part of its family of marks. “A family of marks is a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner. Simply using a series of similar marks does not of itself establish the existence of a family. There must be a recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods.” J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991). Applicant has not established that it owns a family of marks.