CareFirst of Maryland, Inc.

Trademark Trial and Appeal Board

Dec 1, 2009

No. 76671520 (T.T.A.B. Dec. 1, 2009)

Mailed: December 1, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re CareFirst of Maryland, Inc.
________

Serial Nos. 76671520 and 766715221
_______

Barth X. deRosa of Dickinson Wright PLLC for CareFirst of
Maryland, Inc.

John M. Gartner, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney).
_______

Before Hairston, Kuhlke and Walsh, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

On January 19, 2007, CareFirst of Maryland, Inc.
applied to register the marks and CAREFIRST in
standard character form on the Principal Register based on
allegations of use of the marks in commerce under Section
1(a) of the Trademark Act, 15 U.S.C. §1052(a), for services
ultimately identified as:
House mark for indicating membership in an
organization comprised of multiple collective
membership sub-organizations interested in health

1 These proceedings were consolidated upon motion granted by the
Board on May 16, 2009.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial Nos. 76671520 and 76671522
2
maintenance, preventive medicine, prepaid medical
plans, indemnity insurance, pharmaceutical care,
prescription drug benefits, preferred provider
organizations, reduced health costs, and programs
on fitness, prenatal care, substance abuse,
exercise, weight reduction, stress management,
chronic illness, disease management and
alternative therapies, in International Class
200.2

Registration has been refused on the basis that
applicant has not complied with the requirement to delete
the phrase “house mark” from the identifications of its
collective membership services. The examining attorney
asserts that collective membership marks cannot be
registered as house marks or, in the alternative, that
applicant has not demonstrated that it is, in fact, using
the marks sought to be registered as house marks.3

2 Applicant filed requests for reconsideration in which it also
sought to amend the identifications by replacing “an organization
of persons and medical providers” with “an organization comprised
of multiple collective membership sub-organizations.” On March
10, 2009, the examining attorney refused applicant’s requests
stating that the proposed amendments exceeded the scope of the
original identification. In his brief, the examining attorney
withdrew these refusals and we review the remaining issue on
appeal based on the amended identifications.

3 The statutory bases for this requirement and subsequent refusal
are Sections 1(a), 4 and 45 of the Trademark Act, 15 U.S.C.
§§1051(a)(2), 1054 and 1127. Sections 4 and 45 are discussed
infra. Section 1(a) sets out the general requirements for
applications:

The application shall include specification of the
applicant’s domicile and citizenship, the date of the
applicant’s first use of the mark, the date of the
applicant’s first use of the mark in commerce, the
goods in connection with which the mark is used, and a
drawing of the mark.
Serial Nos. 76671520 and 76671522
3
Applicant has appealed the final refusals and the
appeal is fully briefed. We affirm the refusals to
register.
Before addressing the arguments, we first review
relevant law governing collective marks and house marks.
Section 4 of the Trademark Act, 15 U.S.C. §1054, provides
for the registration of collective marks by applicants
“exercising legitimate control over the use of the marks
sought to be registered, even though not possessing an
industrial or commercial establishment, and when registered
they shall be entitled to the protection provided in this
chapter...” 15 U.S.C. 1054.
The term “collective mark” is defined as:
[A] trademark or service mark (1) used by the
members of a cooperative, an association, or
other collective group or organization, or (2)
which such cooperative, association, or other
collective group or organization has a bona fide
intention to use in commerce and applies to
register on the principal register established by
this chapter, and includes marks indicating
membership in a union, an association, or other
organization.

15 U.S.C. §1127.
In Aloe Crème Laboratories, Inc. v. American Society
for Aesthetic Plastic Surgery, Inc., 192 USPQ 170, 173
(TTAB 1976), the Board characterized the different types of
collective marks as follows:
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There are two basic types of collective marks. A
collective trademark or collective service mark
is a mark adopted by a “collective” (i.e., an
association, union, cooperative, fraternal
organization, or other organized collective
group) for use only by its members, who in turn
use the mark to identify their goods or services
and distinguish them from those of nonmembers.
The “collective” itself neither sells goods nor
performs services under a collective trademark or
collective service mark, but the collective may
advertise or otherwise promote the goods or
services sold or rendered by its members under
the mark. A collective membership mark is a mark
adopted for the purpose of indicating membership
in an organized collective group, such as a
union, an association, or other organization.
Neither the collective nor its members uses the
collective membership mark to identify and
distinguish goods or services; rather, the sole
function of such a mark is to indicate that the
person displaying the mark is a member of the
organized collective group. For example, if the
collective group is a fraternal organization,
members may display the mark by wearing pins or
rings upon which the mark appears, by carrying
membership cards bearing the mark, etc. Cf. Ex
parte The Supreme Shrine of the Order of the
White Shrine of Jerusalem, 109 USPQ 248 (Comr.,
1956); and Notes From the Patent Office (United
States Trademark Association, 1965), 3, Part 2,
Note 1-3 through 1-5. Of course, a collective
group may itself be engaged in the marketing of
its own goods or services under a particular
mark, in which case the mark is not a collective
mark but is rather a trademark for the
collective’s goods or service mark for the
collective’s services.

The cases before us involve “collective membership”
marks “[t]he sole purpose of [which] is to indicate that
the user of the mark is a member of a particular
Serial Nos. 76671520 and 76671522
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organization.” In re Code Consultants Inc., 60 USPQ2d
1699, 1700 (TTAB 2001). See generally, Trademark Manual of
Examining Procedure (TMEP) §1304 (6th ed. 2009). Use of a
collective membership mark is by its members. In re
Triangle Club of Princeton University, 138 USPQ 332 (TTAB
1963) (collective membership mark registration denied
because specimen did not show use of mark by members). The
TMEP provides the following instruction as to the
identification of goods or services in an application for a
collective membership mark:
An identification of goods or services is not
appropriate in connection with a collective
membership mark. The purpose of a collective
membership mark is to indicate membership in an
organization. Appropriate identification
language would be, “indicating membership in an
organization (association, club or the like)
...,” followed by a phrase indicating the nature
of the organization or association, e.g.,
“indicating membership in an organization of
computer professionals.”

The nature of an organization can be indicated by
specifying the area of activity of its members
(e.g., they may sell lumber, cosmetics, or food,
or may deal in chemical products or household
goods, or provide services as fashion designers,
engineers, or accountants). If goods or services
are not directly involved, the nature of an
organization can be indicated by specifying the
organization’s type or purpose (such as a service
or social club, a political society, a trade
association, a beneficial fraternal organization,
or the like). Detailed descriptions of an
organization’s objectives or activities are not
necessary. It is sufficient if the
identification indicates broadly either the field
Serial Nos. 76671520 and 76671522
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of activity as related to the goods or services,
or the general type or purpose of the
organization.

TMEP §1304.08(d).

We note that nothing in the Trademark Act prohibits
the use of the same mark as a membership mark by members
and also as a service mark by the parent organization. See
TMEP §§1303.01 and 1304.03. In fact, applicant has
indicated it owns two registrations for service marks which
are identified as house marks.
There are no statutory references to “house marks.”
Rather, this wording has developed over time to be used in
identifications where a mark is used in “combination with
many different ‘product marks’ which appear on different
products emanating from that ‘house.’” J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition, §7:5 (4th ed.
updated 2009).
House marks are addressed in the TMEP as follows:
A house mark is different from a product mark
that is used on a specific item or closely
related items. A product may bear both a product
mark and a house mark. Under certain limited
circumstances, an applicant may apply to register
a mark as a house mark. In an application for
registration of a house mark, the identification
of goods may include wording such as “a house
mark for...” As with other applications, these
applications must define the type of goods with
sufficient particularity to permit proper
classification and to enable the USPTO to make
necessary determinations under § 2(d) of the
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Trademark Act, 15 U.S.C. section 1052(d)... The
USPTO will register a mark as a house mark only
in the limited circumstances where the mark is
actually used as a house mark.

TMEP § 1402.03(b) (emphasis added).

As discussed in In re Royal BodyCare Inc., 83 USPQ2d
1564, 1568 (TTAB 2007), “a mark could be considered a house
mark if the evidence shows that it serves as a mark for a
number of an entity’s products even if the diversity of
products would not be so great that the company would be
able to use the term ‘house mark’ in its identification of
goods.”
In maintaining the requirement to delete the wording
“house mark,” the examining attorney states:
The use and identification requirements for
trademark applications under Trademark Rule
2.31(a)(6) differ from the use and identification
requirements for collective membership mark
applications under 15 U.S.C. §1127 and these
differences account for the different treatment
of house mark language in trademark applications
as compared to collective membership mark
applications. Specifically, Trademark Rule
2.32(a)(6) provides that trademark applications
must identify “the particular goods or services
on or in connection with which the applicant uses
or intends to use the mark.” 15 U.S.C.
§§1051(a)(2) and 1051(b)(2); 37 C.F.R.
2.32(a)(6). TMEP 1402.01. Collective membership
marks, however, are not used by their owners, but
instead are used by members of a particular
organization to signify that they are members of
that organization. 15 U.S.C. 1127; TMEP 1304 et
seq. Applications for collective membership
marks, therefore, do not include an
identification of goods and services but instead
Serial Nos. 76671520 and 76671522
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include language that identifies the nature of
the membership organization. TMEP 1304.09(b).
According [to] the TMEP, “an identification of
goods or services is not appropriate in
connection with a collective membership mark
[because] the purpose of a collective membership
mark is to indicate membership in an organization
[emphasis added].” TMEP 1304.09(b).

Because house mark language identifies goods or
services, this prohibition from using
identification language with collective
membership marks applies to house mark language
as well. ... use of house mark language “is not
appropriate in connection with a collective
membership mark” because collective membership
marks do not identify a wide range of goods or
services, but instead identify the one particular
organization to which the member belongs. ...

[C]ollective membership marks do not allow for
the identification of “a wide range of collective
membership organizations and plans” but instead
only allow for the identification of “membership
in a union, an association, or other organization
[emphasis added].” 15 U.S.C. 1127. It therefore
is not possible for a collective membership mark
to identify more than one membership
organization, let alone a “wide range” of such
organizations. Second, in any case it would not
be accurate for applicant to claim that its
collective membership mark identifies “a wide
range of collective membership organizations”
because applicant’s individual members- the users
of the mark- each belong to only one particular
organization and not to a “wide range” of
organizations.

Br. pp. 5-7.

Applicant contends that “the rationale behind the
existence of a house mark for goods and services equally
applies to collective membership organizations in that
Applicant’s house mark is used in connection with a wide
Serial Nos. 76671520 and 76671522
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range of collective membership organizations and plans.”
Request for Reconsideration (January 12, 2009). However,
as stated by applicant in the Request for Reconsideration,
the “cards [bearing the marks] are used by CAREFIRST
members, not by the collective membership organization or
sub-organization, to indicate their membership in one of
the various collective membership organizations and plans
which fall under the broader CAREFIRST collective
membership organization.” Id. The specimens of use
submitted by applicant bear out this use. One membership
card displays CAREFIRST with BLUECHOICE and another
displays CAREFIRST with PPO FCPS. Request for
Reconsideration, Exhs. B and C. Thus, the use by a member
is not to show membership in a range of collective
organizations but rather in only one organization. Indeed,
it is difficult to conceive of a collective membership mark
that could be “used” to indicate membership in a broad
range of collective organizations. Collective membership
mark use is the reverse of use by the service or trademark
owner, where use on the multiple products or services is by
the same user.
Moreover, while each member’s use indicates membership
in CAREFIRST and a particular sub-organization, the
CAREFIRST portion relates back to the single overarching
Serial Nos. 76671520 and 76671522
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collective. Therefore, even though the members’ individual
separate uses are with various sub-organizations, the
CAREFIRST mark indicates membership in one collective
organization. Applicant presents the Boy Scouts of America
as an example of an umbrella organization with sub-
organizations in the form of individual troops. However,
the same analysis is applicable there. Each boy scout’s
pin would indicate his membership in the umbrella
organization, The Boy Scouts of America, while also
designating the particular troop. As noted by the
examining attorney, “applicant’s claim that the mark is
used in connection with a wide range of plans appears to
identify applicant’s health care plan services, which are
appropriate for trademark registration and not appropriate
for collective membership mark registration.” As discussed
supra, applicant has obtained such registrations.
In any event, one purpose of a house mark designation
is to allow some flexibility in the requirement for
specificity in the identification of goods or services such
that an applicant need not list every single item but
rather can provide a broader identification, e.g., house
mark for a full line of... In this case, applicant has
already listed all the areas of interest in its
identification; thus, the addition of the terminology house
Serial Nos. 76671520 and 76671522
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mark does not serve to broaden the scope of the application
nor is it needed to permit a more general identification.
Finally, applicant contends that “elimination of the
‘house mark’ language will” prejudice applicant. Applicant
explains that it “aggressively argue[d] house mark usage in
the matter of Carefirst of Maryland, Inc. v. First Health
of the Carolinas, 77 USPQ2d 1492 (TTAB 2005) and that
argument and evidence was ignored by the Board. Thus, even
when the argument is aggressively asserted, it appears that
the Board will not necessarily recognize house marks in
argument unless the Applicant perhaps owns a registration
for a house mark. Thus, Applicant has, in fact, been
prejudiced by the absence of such language.” Reply Br. p.
3.
In the Carefirst proceeding, applicant opposed
another’s application based on likelihood of confusion
with, inter alia, a prior collective membership mark. The
Board found that the record did not support a finding that
applicant’s marks were famous. The Board dismissed the
opposition due to the “differences between the highly
suggestive marks CAREFIRST and FIRSTCAROLINACARE, the
crowded field of marks featuring ‘care’ and/or ‘first’ in
the healthcare industry, and the relatively sophisticated
Serial Nos. 76671520 and 76671522
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decision in purchasing or even using healthcare services.”
Carefirst, 77 USPQ2d at 1513.
It is not necessary to have the wording “house mark”
in a registration to prove the ninth du Pont factor
concerning the variety of goods or services on which a mark
is or is not used. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The Board
regularly recognizes house mark use in common law marks and
registered marks without that wording in the
identification. See, Royal BodyCare, supra and cases cited
therein. Moreover, a broad listing of goods or services
serves the same purpose. Finally, the wording “house mark”
in a registration does not make the mark a famous mark.
Fame must be proven by a sufficient evidentiary showing.
As noted above, the use of this wording developed in large
part to provide a mechanism to simplify overly long
identifications.
In conclusion, we find that because applicant’s
collective membership marks are not used as house marks, as
evidenced by the specimens of use, the requirement to
delete the wording “house mark” from the identifications is
appropriate.
Decision: The refusals to register are affirmed.