Blue Cross and Blue Shield of South Carolina

Trademark Trial and Appeal Board

Sep 20, 2019

87890656 (T.T.A.B. Sep. 20, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 20, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Blue Cross and Blue Shield of South Carolina
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Serial No. 87890656
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B. Craig Killough of Barnwell Whaley
for Blue Cross and Blue Shield of South Carolina.

Linda E. Blohm, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
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Before Cataldo, Shaw and Larkin
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
Blue Cross and Blue Shield of South Carolina (“Applicant”) seeks registration on
the Principal Register of the mark COMPANION CARE SOLUTIONS (in standard
characters) for “Case management, namely, preparing healthcare case management
plans for the members of group health insurance plans and coordinating the
procurement of health care services for members of group health insurance plans,” in
International Class 45.1

1 Application Serial No. 87890656 was filed on April 24, 2018 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
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The Trademark Examining Attorney has 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
the mark is merely descriptive of the identified services. When the refusal was made
final, Applicant appealed and requested reconsideration. When the request for
reconsideration was denied, the appeal resumed. The appeal is fully briefed. We
reverse the refusal to register.
I. Mere Descriptiveness under Section 2(e)(1)
“A term is merely descriptive if it immediately conveys knowledge of a quality,
feature, function, or characteristic of the goods or services with which it is used.” In
re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed.
Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828,
1831 (Fed. Cir. 2007)); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009-10 (Fed.
Cir. 1987). Whether a particular term is merely descriptive is determined in relation
to the goods or services for which registration is sought and the context in which the
term 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).
It is the Examining Attorney’s burden to show, prima facie, that a term 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). A prima facie case “requires
‘more than a mere scintilla’ of evidence.” In re Oppedahl & Larson LLP, 373 F.3d
1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citations omitted). It must be based
upon “substantial evidence,” Bayer, 82 USPQ2d at 1831, which means “such relevant
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evidence as a reasonable mind might accept as adequate to support a conclusion. Id.
(quoting Consol. Edison Co. v. NLRB, 305 U.S. 197, 229, 59 S.Ct. 206 (1938)). The
Board resolves doubts as to the mere descriptiveness of a mark in favor of the
applicant. In re The Stroh Brewery Co., 34 USPQ2d 1796, 1797 (TTAB 1994).
II. Arguments and Evidence
The Examining Attorney argues that:
“COMPANION CARE SOLUTIONS” immediately conveys
information concerning a feature or characteristic of the
applicant’s case management services, namely that the services
features a means (SOLUTIONS) for solving a problems or dealing
with a difficult situation including those relating to home care
and older adults with disabilities (COMPANION CARE).2
In support of the refusal, the Examining Attorney submitted: a dictionary
definition of the term “solution” which is defined as a “means of solving a problem or
dealing with a difficult situation;”3 a website excerpt from a third party individual
who provides “caregiving for seniors” under the name “Companion Care Solutions;” a
definition of “companion care” found in a blog article titled “What is Companion Care?
Companion Caregiver Costs, Duties and More” from a third-party commercial
website, Caregiverhomes.com; and excerpts from Applicant’s related-company
website explaining the nature of the services it intends to provide under its mark.

2 Examining Attorney’s Br., p. 5, 8 TTABVUE 6.
3 Https://en.oxforddictionaries.com/definition/us/solution#solution, Office Action of May 11,
2018.
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The website of the third-party Companion Care Solutions provider explains that
it offers “home helper assistance, personal care (nonmedical), recreational and
socialization activities, and family support services.”4

The foregoing website excerpts do not support the Examining Attorney’s
argument inasmuch as the website does not define “companion care” or use the term
in a descriptive manner. Although the website states that “Companion Care Solutions
provide home helper assistance, personal care (non medical), recreational and
socialization activities, and family support services,” the use of “companion care” is
more akin to trademark usage and does not establish that the term is merely
descriptive of these services.

4 Https://companioncaresolutions.com, Office Action of May 11, 2018.
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The Caregiverhomes.com blog titled “What is Companion Care? Companion
Caregiver Costs, Duties and More” offers “A Definition of Companion Care”:
Companion care is a form of home care offering non-medical
services to older adults or people with disabilities. . . . The goal of
companion care is primarily emotional support and socialization,
although companions may help older adults with a variety of
tasks including:
• Light housekeeping
• Other household chores such as washing clothing and dishes
• Running errands such as grocery shopping
• Planning and scheduling appointments and social activities
• Transportation to appointments and other activities
• Preparing meals
• Socialization and entertainment
• Communicating with family members and other care team professionals
• And more
Applicant argues that the single definition of COMPANION CARE provided by a
commercial site, Caregiverhomes.com, is of “doubtful reliability.”5 Applicant’s
argument is well taken. The blog excerpt purports to define the term “companion
care” but does not identify the source of the definition provided. Thus, we cannot
verify it or determine its reliability. See In re Jimmy Moore LLC, 119 USPQ2d 1764,
1768 (TTAB 2016) (refusing to take judicial notice of definitions that do not indicate
their source); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006) (refusing to
take judicial notice of a definition where the source of the definition was not identified
on the submitted website excerpt or by the examining attorney and thus could not be

5 Applicant’s Br., p. 10, 4 TTABVUE 11.
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verified). See also In re Total Quality Grp., Inc., 51 USPQ2d 1474, 1476 (TTAB 1999)
(Applicant may rebut online dictionary evidence where the source is unknown).
To counter the Examining Attorney’s evidence, Applicant submitted status and
title copies of nine registrations for the mark COMPANION, registered for services
related to healthcare management, including:
• Reg. No. 2226487 for the mark COMPANION, in typed form, for, inter alia,
medical cost management services and administration of preferred
providers plans in the field of insurance and pre-paid health care;6
• Reg. No. 1946380 for the mark COMPANION, in typed form, for, inter alia,
health care utilization and review services and insurance claims
administration;7 and
• Reg. No. 1566320 for the mark COMPANION, in typed form, for, inter alia,
insurance administration and consulting services.8
Although these registrations do not include the additional terms in the mark,
CARE SOLUTIONS, they nevertheless suggest that the term COMPANION is not
merely descriptive when used in connection with medical and health-insurance
related services.
Applicant also submitted two declarations from Stephanie Heckart, the Chief
Operating Officer and Chief Officer of Clinical Operations for Companion Benefit

6 Issued February 23, 1999, renewed.
7 Issued January 9, 1996, renewed.
8 Issued January 4, 1998, renewed.
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Alternatives, Inc., a wholly-owned subsidiary of Applicant.9 Ms. Heckart states in her
declarations that Applicant (via its subsidiary) does not provide “companion care”
services, as defined by the blog excerpt, under the COMPANION CARE SOLUTIONS
mark. Instead, Applicant’s “Case Managers . . . work with health care providers for
members . . . to improve the efficiency and quality of the health care services received
by the members.”10 That is, Applicant is in the business of managing health care
services, not home care services.
Besides the two internet excerpts, the Examining Attorney introduced excerpts
from the website of Companion Benefit Alternatives, the provider of Applicant’s
services.11 But with only a single uncorroborated definition of “companion care” we
cannot say whether Applicant’s services comprise “companion care” and, therefore,
that the mark “conveys knowledge of a quality, feature, function, or characteristic” of
the services with which it is used. Chamber of Commerce, 102 USPQ2d at 1219. In
sum, a single blog excerpt of uncertain origin from a commercial website is not
“adequate to support a conclusion” as to the descriptive meaning of “companion care.”
Bayer, USPQ2d at 1831.
On the present record, we find that the USPTO has not established a prima facie
case that Applicant’s mark is merely descriptive of Applicant’s services within the
meaning of Trademark Act Section 2(e)(1). To the extent that any “doubts exist as to

9 Responses of Office Actions dated November 9, 2018 and February 12, 2019.
10 Heckart Dec., para. 10, Response to Office Action dated February 12, 2019.
11 Https://www.companionbenefitalternatives.com, Office Action of November 23, 2018.
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whether a term is descriptive as applied to the goods or services for which registration
is sought, it is the practice of this Board to resolve doubts in favor of the applicant
and pass the mark to publication with the knowledge that a competitor of applicant
can come forth and initiate an opposition proceeding in which a more complete record
can be established.” In re The Stroh Brewery Co., 34 USPQ2d at 1797; see also In re
Merrill Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1144
(Fed. Cir. 1987), citing In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972).
Decision: The refusal to register is reversed.