Centene Corp.

Trademark Trial and Appeal Board

May 6, 2016

No. 86312275 (T.T.A.B. May. 6, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 6, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Centene Corp.
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Serial No. 86312275
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Meredith P. Gammill, Esq.,
For Centene Corp.

Jessica Powers Ludeman, Trademark Examining Attorney, Law Office 104,
Dayna Browne, Managing Attorney.
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Before Cataldo, Hightower, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

Centene Corporation (“Applicant”) seeks registration on the Principal Register of
the mark AMBETTER ESSENTIAL CARE, with CARE disclaimed, for “Health
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insurance underwriting” in International Class 36.1 The Examining Attorney refused
registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on
a likelihood of confusion with the registered mark ESSENTIALCARE in standard
characters for “health care insurance underwriting services” in International Class
36.2
After the Examining Attorney made the refusal 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. Likelihood of Confusion

The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a 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 Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the relatedness of the services. See In re Chatam Int’l Inc., 380 F.2d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004); 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 services] and differences in the marks.”).

1 Application Serial Number 86312275 was filed June 17, 2014 based upon Applicant’s
allegation of its bona fide intent to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
2 Registration Number 3080423, issued April 11, 2006; renewed.
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A. Relatedness of the Services and Trade Channels
We first address the second and third du Pont factors, the similarity or
dissimilarity of the services and channels of trade. We must determine whether their
degree of relatedness rises to such a level that consumers would mistakenly believe
Applicant’s services and those in the cited registration emanate from the same source.
We must focus on the services as identified in the application and cited registration.
Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1162 (Fed. Cir. 2014); Octocom Systems, Inc. v. Houston Computers Services
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Though worded slightly
differently, both the subject application and the cited registration identify health
insurance underwriting services. Thus, the services are identical. Applicant offers no
argument on this factor.
We presume, as we must, that Applicant’s services and those in the cited
registration, for which both recitations are unrestricted, move in all channels of trade
normal for such services and are available to all potential classes of ordinary
consumers. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1846 (Fed. Cir. 2000) (affirming Board finding that where the identification is
unrestricted, “we must deem the goods to travel in all appropriate trade channels to
all potential purchasers of such goods”); In re Jump Designs LLC, 80 USPQ2d 1370,
1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Moreover,
because the services described in the application and the cited registration are
identical, we must presume that they travel through the same channels of trade to
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the same class of purchasers, considerations under the third du Pont factor. See
American Lebanese Syrian Assoc. Charities Inc. v. Child Health Research Inst., 101
USPQ2d 1022, 1028 (TTAB 2011); see also In re Viterra, 671 F.3d 1358, 101 USPQ2d
1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal presumption
in determining likelihood of confusion). Thus, the second and third du Pont factors
strongly weigh in favor of likely confusion.
B. Similarity of the Marks and Strength of the Cited Mark
With respect to the marks, we must compare them “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 test assesses
not whether the marks can be distinguished in a side-by-side comparison, but rather
whether their overall commercial impressions are so similar that confusion as to the
source of the services offered under the respective marks is likely to result. Coach
Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012); see also Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB
2012). Moreover, where, as here, the services are identical, the degree of similarity of
the marks necessary to find likelihood of confusion need not be as great. Coach Servs.,
Inc., 101 USPQ2d at 1722; Viterra, 101 USPQ2d at 1908 (citing Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir.
1992)).
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Applicant’s proposed mark is AMBETTER ESSENTIAL CARE in standard
characters, with CARE disclaimed, and the mark in the cited registration is
ESSENTIALCARE in standard characters. Thus, the marks share a significant
visual and phonetic similarity because of the common wording ESSENTIAL CARE.
Although there is a space between these two words in Applicant’s mark, the
pronunciation and visual effect of ESSENTIALCARE and the ESSENTIAL CARE
portion of Applicant’s mark remains the same. See, e.g., In re ING Direct Bancorp,
100 USPQ2d 1681, 1690 (TTAB 2011) (finding “Person2PersonPayment” generic
despite “slight change” of deleting spaces between words); Giersch v. Scripps
Networks Inc., 90 USPQ2d 1020, 1025 (TTAB 2009) (finding that DESIGNED TO
SELL does not create a distinct commercial impression from DESIGNED2SELL).
Applicant attempts to minimize the significance of the common terms by asserting
that ESSENTIAL CARE is weak. In an effort to show the alleged weakness, Applicant
includes a list of third-party registrations, provided for the first time in its brief, that
include these terms. However, Applicant failed to properly introduce evidence of any
of the third-party registrations, except one. We therefore sustain the Examining
Attorney’s objection to the list, and these registrations have not been considered,
apart from the one correctly submitted during prosecution. “To make a third-party
registration of record, a copy of the registration, either a copy of the paper USPTO
record, or a copy taken from the electronic records of the Office, should be submitted.
[citations omitted].” In re Jump Designs, LLC, 80 USPQ2d at 1372 (refusing to
consider list of registrations). See also In re Compania de Licores Internacionales S.A.,
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102 USPQ2d 1841, 1843 (TTAB 2012) (mere listing of third-party registrations
insufficient); TBMP § 1208.02 (June 2015) (“Mere listings of registrations… are not
sufficient to make the registrations of record”). Even had Applicant provided copies
of the registrations, evidence submitted for the first time with an appeal brief is
untimely. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d) (“The Trademark Trial and
Appeal Board will ordinarily not consider additional evidence filed with the Board by
the appellant or by the examiner after the appeal is filed.”). We recognize that the
terms ESSENTIAL and CARE have some significance with regard to health care.
However, given the lack of evidence,3 we decline to treat ESSENTIAL or the entire
term ESSENTIAL CARE as weak in the comparison of the marks as used in
connection with health insurance underwriting services. We find the sixth du Pont
factor concerning the number and nature of similar marks in use on similar services
neutral.
Applicant’s mark contains the additional term AMBETTER, which Applicant has
described as its “house mark.”4 Applicant asserts on appeal that it has created a
“family” of marks using the coined term AMBETTER in connection with its health

3 Although not argued in its brief, we note that during prosecution, Applicant submitted
evidence of three live registrations and one cancelled registration for marks that consist of or
include the term ESSENTIAL for health insurance underwriting. We find this small quantity
of third-party evidence unpersuasive to show weakness. See Juice Generation, Inc. v. GS
Enterprises LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (weakness shown
by at least 26 uses or registrations of the same phrase for restaurant services); Jack Wolfskin
Ausrustung Fur Draussen GmbH v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116
USPQ2d 1129, 1136 (Fed. Cir. 2015) (third-party weakness evidence characterized as
“voluminous”).
4 January 15, 2015 Response to Office Action at 1 (“The term AMBETTER has become a house
mark”).
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care services, and points to prior registrations and other pending applications as
examples of its other marks consisting of or including AMBETTER.5
The family of marks doctrine is not available to an applicant seeking to overcome
a likelihood of confusion refusal in an ex parte proceeding. The focus must be on the
mark Applicant seeks to register, not other marks Applicant may have used or
registered. In re Cynosure Inc., 90 USPQ2d 1644, 1645 (TTAB 2009).6
While Applicant contends that the house mark serves to distinguish its mark from
that in the cited registration,7 the Examining Attorney argues that because
Applicant’s added term is a house mark, consumers therefore would believe these
services come from the same source because the remainder of Applicant’s mark
particular to the services is essentially identical to the cited mark.8 Although the
added term AMBETTER constitutes a significant difference from the cited mark, we
find that in this case, the presence of the term AMBETTER promotes, rather than
dispels, likely confusion. No per se rule exists that if two marks are confusingly
similar, the addition of a house mark will not suffice to differentiate them. New
England Fish Co. v. Hervin Co., 511 F.2d 562, 184 USPQ 817, 819 (CCPA 1975).
Nonetheless, the addition of trade names and house marks to otherwise identical

5 10 TTABVUE 5, 9.
6 We observe nonetheless that even if the family of marks doctrine was available to Applicant
in this case, Applicant’s ownership of similar registrations does not per se establish a family.
Rather there must be recognition by the public that the shared characteristic (or “family
surname”) is indicative of a common origin. See J & J Snack Foods Corp. v. McDonald's
Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991).
7 10 TTABVUE 8-9.
8 12 TTABVUE 7.
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terms often does not avoid likelihood of confusion. “[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 applicant’s 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 the addition of a trade name will
make consumers think that the 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”). Here, consumers would encounter the identical insurance underwriting
services under the marks, and could easily assume that they come from the same
source, which sometimes adds its AMBETTER mark to ESSENTIAL CARE and
sometimes does not. See Nat’l Data Corp., 224 USPQ at 751 (while marks must be
compared in their entireties, “there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular feature of the mark,
provided the ultimate conclusion rests on a consideration of the marks in their
entireties”). Thus, despite the addition of the term AMBETTER, the commercial
impression of the marks remains comparable.
Given the similarity in sight, sound, and commercial impression of the marks in
their entireties, the first du Pont factor weighs in favor of likely confusion.
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C. Actual Confusion
Applicant argues that the record lacks evidence of actual confusion in the
marketplace despite, according to Applicant, two years of co-existence. We note that
the 2013 first use date Applicant now asserts in its brief is earlier than the November
15, 2014 date averred to in its Allegation of Use.9 Regardless, the lack of evidence of
actual confusion carries little weight, especially in an ex parte context, where the
owner of the cited registration had no opportunity to offer evidence. In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003)
(“uncorroborated statements of no known instances of actual confusion are of little
evidentiary value”). This du Pont factor is neutral.
D. “Any Other Established Fact Probative of the Effect of Use”
Finally, presumably under the “catchall” du Pont factor, Applicant argues that the
USPTO has issued registrations to different owners of marks that are “identical or
nearly so” “in connection with services that are also either identical or closely
related,”10 which should weigh in favor of granting registration here. Even assuming,
arguendo, that the three marks discussed by Applicant coexist on the Register for
related goods that are not at issue in this case, we find such third-party registrations
irrelevant to this case and lacking in probative value. Each case must be decided on
its own facts. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001) (noting we “must assess each mark on the record of public perception

9 August 12, 2015 Amendment to Allege Use.
10 10 TTABVUE 12.
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submitted with the application” and finding “little persuasive value” in third-party
registration evidence of alleged inconsistency); In re Merrill Lynch, Pierce, Fenner &
Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987) (“Each application
for registration must be considered on its own merits”). Moreover, we reject
Applicant’s contention that these three registrations somehow establish a “practice”
by the USPTO.
II. Conclusion
Based on the similarity of the marks, the identical services at issue, and the
identical trade channels, we find that Applicant’s mark is likely to cause confusion
with the mark in the cited registration. The absence of actual confusion evidence in
this ex parte record lacks probative value to overcome the likelihood of confusion.
Decision: The refusal to register Applicant’s mark is affirmed.