Blue Cross and Blue Shield of Minnesotav.Rx Aware, Inc.

Trademark Trial and Appeal Board

Jun 9, 1998

No. 91097936 (T.T.A.B. Jun. 9, 1998)

Paper No. 29
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 9, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Blue Cross and Blue Shield of Minnesota
v.
Rx Aware, Inc.
_____
Opposition No. 97,936
to application Serial No. 74/476,685
filed on January 5, 1994
_____
J. Randall Benham of Oppenheimer Wolff & Donnelly for Blue
Cross and Blue Shield of Minnesota
James N. Hulme of Kelly & Hulme for Rx Aware, Inc.
______
Before Seeherman, Quinn and Hohein, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Blue Cross and Blue Shield of Minnesota has opposed the
application of Rx Aware, Inc. to register RxAWARE and
design, with Rx disclaimed, for “consulting services in the
field of drug interactions.”1 The mark is shown below.

1 Application Serial No. 74/476,685, filed January 5, 1994,
asserting first use and first use in commerce in May, 1991.
Opposition No. 97,936
2
As grounds for opposition opposer has alleged that it
provides services in the field of health and health
insurance; that it has made prior use of the marks AWARE and
AWARE GOLD for its products and services; that it owns
registrations for these marks; and that applicant’s use of
its mark on its identified services is likely to cause
confusion. In its answer applicant has denied the
allegations of the notice of opposition.2
The record includes the pleadings; the file of the
opposed application; applicant’s responses to opposer’s
first set of interrogatories; opposer’s registrations for
AWARE3 and AWARE GOLD4 for, in each instance, “health
insurance underwriting services and administering insurance
plans for others” and “arranging health care services for
others”; the affidavits of William Jenison, Jack Yarbrough,
Mary Stevens, Richard Wagenman, Petrice Balkan-Feick, Roger
R. Greenwald, Ray Kuntz, William J. Riley, Larry G. Solberg

2 Applicant also asserted as a pro forma affirmative defense
that opposer failed to allege grounds sufficient to establish its
standing. Applicant never filed a motion to dismiss, nor did it
pursue an allegation that opposer failed to prove its standing.
Accordingly, this “defense” is deemed to have been waived.
3 Registration No. 1,348,499, issued July 9, 1985; Section 8
affidavit accepted; Section 15 affidavit filed.
4 Registration No. 1,361,020, issued September 17, 1985; Section
8 affidavit accepted; Section 15 affidavit received.
Opposition No. 97,936
3
and David Lamson; and a search report prepared by a private
company.5
The case has been fully briefed, but an oral hearing
was not requested.
Opposer is a wholly-owned subsidiary of Aware
Integrated, Inc. It has previously been the parent
corporation of various companies which are currently
subsidiaries of Aware Integrated, but in July 1994 a
corporate restructuring occurred and Aware Integrated was
formed as the holding corporation. Each of its subsidiaries
provides a service or product complementary to the
integrated health care system of Aware Integrated.
Opposer is “Minnesota’s first and largest health
coverage carrier.” Jenison, & 3. It markets health care
management and financing services to Minnesota customers
and, through subsidiaries, to customers nationwide. Through
its various subsidiaries, as well as through partnerships

5 Both opposer and applicant submitted all of this evidence
under a notice of reliance. While the interrogatories and
responses thereto may be made of record pursuant to a notice of
reliance, the plain copies opposer submitted of its pleaded
registrations do not meet the requirements of Trademark Rule
2.122(d)(2), which provides that a party may make its own
registration(s) of record by submitting status and title copies
thereof. Similarly, the search report prepared by a private
company, submitted by applicant, does not constitute an official
record or a printed publication within the contemplation of
Trademark Rule 2.122(e). Moreover, while Trademark Rule 2.123(b)
provides that, by agreement of the parties, the testimony of any
witness may be submitted in the form of an affidavit, in this
case the parties did not submit such an agreement. However, both
opposer and applicant have treated all of the submissions as
Opposition No. 97,936
4
formed with hospitals, clinics and health care providers,
opposer provides an array of health care-related products
and services.
Since the mid 1980’s opposer has used the marks AWARE
GOLD, AWARE CARE6 and AWARE in connection with its health
care-related products and services. Opposer markets to
subscribers two health care plans under the marks AWARE GOLD
and AWARE CARE. The AWARE CARE plan is offered by opposer to
individuals who are not covered by a group health plan.
The AWARE GOLD health plan was introduced over ten
years ago, and is opposer’s most popular. Opposer has
established a network of AWARE GOLD health care providers
which includes thousands of physicians, hospitals and
clinics. This AWARE network encompasses every hospital and
virtually every physician (16,500) in the state of
Minnesota. The AWARE GOLD providers receive literature
about the AWARE GOLD health plans, sign AWARE provider
service agreements with opposer and have recognition in the
industry as AWARE providers.
Both of the AWARE health plans are marketed primarily
to employers located within Minnesota. However, opposer’s

being of record, and we therefore deem them to have been
stipulated into the record.
6 Although opposer did not plead ownership of common law rights
in this mark, we deem the pleadings to have been amended pursuant
to Fed. R. Civ. P. Rule 15(b) to assert a claim based on this
mark. We would also point out that, even without this mark, our
decision herein would be the same.
Opposition No. 97,936
5
affiliated companies market these health plans to employers
located in bordering counties in four states, and opposer
also provides the control health plan for a number of large
national employers which have employees located throughout
the United States, so that thousands of employees nationwide
are covered under opposer’s AWARE GOLD health plans. These
employees are provided with AWARE GOLD membership
information and AWARE GOLD coverage cards.
Health care providers in Minnesota often refer to a
particular health plan or provider network of opposer as the
“Aware” plan or the “Aware” network, and many providers
refer to themselves as “Aware” providers. The AWARE GOLD
network typically refers to the network of physicians and
the AWARE network typically refers to the network of
hospitals. Employers, their health benefit managers, and
their covered employees commonly refer to their coverage or
health plan simply as “Aware.”
Opposer spends over $3.5 million each year advertising
its various products and services, which include its AWARE
products and services. In 1994, opposer generated revenues
of over $1.25 billion, “a recognizable portion of which
could be allocated to revenues received from Aware Gold7 or
Aware CareJ health plans.” Jenison, & 11.7

7 Opposer has not provided specific information as to the sums
spent or revenue generated in connection with the AWARE marks.
Opposition No. 97,936
6
Aware Integrated Systems operates as a business line of
opposer’s. This is the primary information management and
technology resource for the integrated health care system of
Aware Integrated, Inc., opposer’s parent company. Aware
Integrated Systems has a network of computer software
systems which, inter alia, provide information processing
and decision making functions related to health care
provider information, health plan enrollment and
eligibility, and claims management. These information
services are being marketed to other health plan
organizations.
Opposer’s parent company had also, at the time Mr.
Jenison’s affidavit was signed on June 20, 1996, recently
“made a decision to form a new limited liability company
which will be called ‘Aware Dental Services’.” This company
was to provide dental claims administration and various
dental products and services to other health plan
organizations. According to Mr. Jenison, “under current
plans, Aware Dental Services will become a viable business
operation in July of 1996.” &8.
Pharmacy Gold, Inc. had been incorporated as a
subsidiary of opposer in 1993, but because of the
restructuring mentioned above, it and opposer are now
wholly-owned subsidiaries of Aware Integrated, Inc.

Opposition No. 97,936
7
Pharmacy Gold is a pharmacy benefit management company which
provides prescription drug and pharmaceutical management
services to clients throughout the country. One of its
services is drug utilization review, which is a review of
prescription drug compatibility and usage issues. Pharmacy
Gold markets its services primarily to large employers,
other pharmacy benefit management companies, and various
health plans. Although it does not market its services
directly to health care providers, it has frequent
interaction with health care providers as a result of its
drug utilization review services, pharmacist networks, and
its health care provider educational programs.
We have relatively little information about applicant
because the affidavit of David Lamson, its president, which
was the only testimony submitted, consists primarily of
argument. The affidavit does state, however, that applicant
was formed in 1993 to develop software and related services
for use by medical professionals to provide comprehensive
drug interaction information. Applicant chose its mark to
indicate that its service was to make the public at large
and medical professionals in particular aware of possible
drug interactions.
Further, applicant’s responses to opposer’s
interrogatories, made of record by opposer, state that the
goods or services applicant sells or intends to sell under
Opposition No. 97,936
8
the mark RxAWARE are “software programs, including
associated databases, for use by health care professionals,
which allow users to maintain accurate patient medical
records, receive appropriate drug therapies, analyze
possible drug interaction, determine proper drug change and
the like,” (response to Int. No. 2), and a drug interaction
reporting service using this software. The interaction
service and software was tested among friends and relatives,
and was distributed in Long Island, New York, for a period
of eight months to one year. The interaction report service
test was not successful and produced no sales; the software
program is still being developed.
Advertising has been limited to press releases
distributed throughout the New York tri-state area to
newspapers with a circulation of 5,000 or more.
Mr. Lamson acknowledged, in his affidavit, that
“Opposer provides services in association with trademarks
containing the word ‘Aware’ alone and with some type of
suffix as a part of the mark (i.e.,: Gold, Care and the
like)” & 8; that “these marks are used in association with
various health care plans and services including providing
health care provider’s [sic] with information concerning
health care plan enrollment and eligibility and health care
claims management” & 9; and “conceded that Opposer and it’s
[sic] Aware7 family of marks are well known in their field”
Opposition No. 97,936
9
& 14,8 although Mr. Lamson pointed out that this field is
the area of health insurance and insurance administration
services and plans and not the area of consulting services
in the field of drug interactions.
Priority is not in issue in view of opposer’s pleaded
registrations. King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Moreover,
the record established opposer’s earlier use of the marks
AWARE, AWARE GOLD and AWARE CARE in connection with its
health care plans.
Turning to the issue of likelihood of confusion, we
have considered all of the relevant du Pont factors, In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973), in determining that applicant’s use of RxAWARE
for consulting services in the field of drug interactions is
likely to cause confusion with opposer’s use of AWARE, AWARE
CARE and AWARE GOLD for arranging health care services for
others and offering health care plans.
First, the marks of the parties are very similar.
Applicant’s mark, because it is depicted with the “x” as a
subscript, emphasizes the word AWARE which, because of the
descriptive significance of Rx, must be considered the

8 We note that opposer neither pleaded nor submitted evidence
that it had an AWARE family of marks. Accordingly, although
applicant has referred in both Mr. Lamson’s testimony and in its
brief to such a family, this “concession” has played no part in
our decision herein.
Opposition No. 97,936
10
dominant part of the mark. Opposer not only has
registrations for the marks AWARE GOLD and AWARE for, inter
alia, arranging health care services for others, but the
evidence shows that one of its health plans is marketed as
the AWARE CARE plan, while the providers of opposer’s health
care plans are referred to as AWARE providers. As a result
of opposer’s use of these various AWARE marks in connection
with health care plans and for arranging health care
services, consumers are very likely to view the mark RxAWARE
as one of opposer’s AWARE marks. This is not to say that
they will ignore the Rx which forms the initial element of
applicant’s mark, or even that they will not recognize that
the connotation of RxAWARE for the identified services
suggests a concern about drug interactions. However,
consumers seeing RxAWARE in connection with “consulting
services in the field of drug interactions” are likely to
believe that RxAWARE is a variant of opposer’s other AWARE
marks, chosen to indicate the specific services with which
it is used, rather than as a mark indicating origin in a
separate source.
As for the respective services, although we cannot
accept opposer’s argument that the services identified in
opposer’s registrations—-arranging health care services for
others—-would encompass “consulting services in the field of
Opposition No. 97,936
11
drug interactions,” we do find that the services are related
and could be expected to emanate from a single source.
Opposer has shown that one of its former subsidiaries,
and now its sister company, provides a service similar to
that identified in applicant’s application, namely the
review of prescription drug compatibility and usage issues.
Although this service is rendered under the trade name
Pharmacy Gold, Inc., the activities of this company show
that drug utilization review services may be rendered
through the same organization which arranges health care
services. Moreover, the record shows that opposer’s parent,
Aware Integrated, Inc. is engaged, through its various
subsidiaries, in a wide range of health related services,
many of which are rendered under “Aware” trade names. Thus,
consumers and health care providers who are familiar with
opposer’s activities in the health care field are likely,
upon seeing RxAWARE used in connection with consulting
services in the filed of drug interactions, to believe that
such services emanate from opposer or one of its related
companies. See In re International Telephone & Telegraph
Corp., 197 USPQ 910, 911 (TTAB 1978) (“It is not necessary
that the goods of the parties be similar or competitive, or
even that they move in the same channels of trade, to
support a holding of likelihood of confusion. It is
sufficient that the respective goods of the parties are
Opposition No. 97,936
12
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods are such
that they would or could be encountered by the same persons
under circumstances that could, because of the similarity of
the marks, give rise to the mistaken belief that they
originate from the same producer.”)
Another factor in our finding of likelihood of
confusion is the fame of opposer’s AWARE marks. We find
that opposer’s AWARE GOLD and AWARE marks are famous at
least in the state of Minnesota, where 98% of the
physicians, and 100% of the hospitals, participate in the
AWARE GOLD plan, and are part of the AWARE network.9 See
Giant Food, Inc. v. Nation’s Foodservice, Inc., 218 USPQ
390, 394 (Fed. Cir. 1983); Carl Karcher Enterprises Inc. v.
Stars Restaurant Corp., 35 USPQ2d 1125, 1130 (TTAB 1995).
The fame of a mark “plays a dominant role in cases featuring
a famous or strong mark.” See Kenner Parker Toys Inc. v.
Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453,
1456 (Fed. Cir. 1992). Certainly the hospitals, doctors,

9 The search report showing third-party registrations for marks
containing the term AWARE do not detract from our finding that
opposer’s marks are strong. There are only two such
registrations, for PROJECT HEALTH AWARE for promoting public
awareness of health topics, fitness and the importance of health-
related organizations and ARTHRITIS AWARENESS CENTER for medical
services, namely, operating a medical center specializing in the
treatment of patients afflicted with arthritis. Suffice it to
say that these registrations do not show that AWARE, as used for
opposer’s services, has a suggestive meaning, or that opposer’s
marks are weak.
Opposition No. 97,936
13
pharmacies and consumers in Minnesota are likely, because of
the strength of opposer’s various AWARE marks, to assume
that there is an association of source between RxAWARE for
drug interaction consulting services and opposer.
Although this point has not been argued by applicant,
we have also considered the du Pont factor of the conditions
under which and buyers to whom sales are made. Hospitals,
doctors and pharmacies must be considered sophisticated
purchasers, while individuals who would be interested in
consulting services in the field of drug interactions would
presumably be careful purchasers. Nevertheless, because of
the strength of opposer’s marks, the similarity of the marks
and the relatedness of the services, we find that even
careful purchasers are likely to be confused by applicant’s
use of RxAWARE for its services.
Finally, any doubts about likelihood of confusion must
be resolved against applicant as the newcomer. Century 21
Real Estate Corporation v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698 (Fed. Cir. 1992); In re Hyper Shoppes
(Ohio), 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir
Decision: The opposition is sustained, and
registration to applicant is refused.

Opposition No. 97,936
14
E. J. Seeherman
T. J. Quinn
G. D. Hohein
Administrative Trademark Judges
Trademark Trial and Appeal Board