Coventry Healthcare, Inc., Coventry Corp., Health-america Pennsyl-vania, Inc. and Maxicare Health Plans, Inc.v.Healthcard America, Inc.

Trademark Trial and Appeal Board

Aug 15, 2001

No. 91113393 (T.T.A.B. Aug. 15, 2001)

8/15/01 Paper No.
13

GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Coventry Heathcare, Inc.,
Coventry Corporation,
Healthamerica Pennsylvania, Inc., and
Maxicare Health Plans, Inc.
v.
Healthcard America, Inc.
_____

Opposition No. 113,393 to application Serial No. 75/299,221
filed on May 28, 1997
_____

Philip D. Mitchell of Epstein Becker & Green, P.C. for
Coventry Heathcare, Inc., Coventry Corporation, Healthamerica
Pennsylvania, Inc., and Maxicare Health Plans, Inc.

Stephen J. Grifferty and Teresa A. Prescott of Tobin and
Grifferty, P.C. for Healthcard America, Inc.
______

Before Simms, Hanak and Hohein, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Healthcard America, Inc. has filed an application to
register the mark "HEALTHCARD AMERICA" and design, as shown
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 113,393
2
below,
for the services of "healthcare financing, medical savings
accounts, and electronic claims filing."1
Coventry Heathcare, Inc., Coventry Corporation,
Healthamerica Pennsylvania, Inc., and Maxicare Health Plans,
Inc. have opposed registration on the ground that opposers
"are engaged in the business of administering and managing
health maintenance organizations (HMOs) and preferred provider
organizations (PPOs) that are marketed to the general public";
that opposer Maxicare Health Plans, Inc. "is the owner,
through assignment, of ... Registration No. 1,401,497 for the
mark 'HEALTHAMERICA' (Reel/Frame Number 0857/0337) for [the
services of] 'management of entities which provide prepaid
health care services' in International Class 35; 'prepaid
financing of health care services' in International Class 36;
and 'providing health care services' in International Class
42[,] which ... issued on July 15, 1986 [and sets forth, for
each class, a date of first use anywhere of January 17, 1983
and a date of first use in commerce of April 21, 1983;
combined affidavit §§8 and 15]"; that such registration "is
valid and subsisting, and the mark encompassed by the
Registration remains in use"; that opposer Coventry

1 Ser. No. 75/299,221, filed on March 28, 1997, which is based on an
allegation of a bona fide intention to use the mark in commerce. The
term "HEALTHCARD" is disclaimed.
Opposition No. 113,393
3
Corporation "holds a valid exclusive license from Maxicare
[Health Plans, Inc.] to use the mark 'HEALTHAMERICA' in the
states of Pennsylvania, Illinois, West Virginia and Missouri";
that opposer Coventry Heathcare, Inc. "is the corporate parent
of Coventry [Corporation]"; that opposer Healthamerica
Pennsylvania, Inc. "holds a valid sublicense from Coventry
[Corporation] to use the 'HEALTHAMERICA' mark in the states of
Pennsylvania, Illinois, West Virginia and Missouri" and, as a
subsidiary of Coventry Corporation, "has used the
'HEALTHAMERICA' mark continuously in commerce from at least as
early as October 1, 1998 ... in connection with the operation
of HMOs and PPOs"; that applicant "intends to use the ...
'HEALTHCARD AMERICA' and Design mark in connection with
healthcare financing, including the establishment of medical
savings accounts, which is as an alternative to HMOs, PPOs and
traditional indemnity insurance"; and that applicant's "mark
'HEALTHCARD AMERICA' and Design[,] when used with the services
... recited in the Application, so resembles the
'HEALTHAMERICA' mark, registered for similar healthcare
financing and related services, as to [be] likely to cause
confusion, or to cause mistake or to deceive."
Applicant, in its answer, has admitted that it
intends to use its mark "in connection with health care
Opposition No. 113,393
4
financing and medical savings accounts," but has denied the
remaining salient allegations of the notice of opposition.2
The record consists of the pleadings; the file of
the opposed application; and, as explained below, the
admission by applicant that the registration pleaded in the
notice of opposition is subsisting and owned by opposers.
Neither party took testimony or introduced any other evidence.
Briefs have been filed, but an oral hearing was not requested.
Priority of use is not in issue in an opposition
proceeding where it is established that the registration for a
mark which is pleaded in the notice of opposition is
subsisting and is owned by the opposer or opposers. See King
Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974). Although, in the present case,
opposers have failed to make their pleaded registration for
the mark "HEALTHAMERICA" properly of record,3 applicant
concedes in its brief (at 4) that:

2 Although applicant has also nominally pleaded several "affirmative
defenses," such allegations are essentially amplifications of its
denials of a likelihood of confusion as alleged by opposers.
3 We note, in this regard, that as indicated in TBMP §703.02(a), an
opposer or opposers pleading ownership of a subsisting federal
registration may properly make such registration of record by (i)
filing with the notice of opposition two copies of the registration
which have been prepared and issued by the United States Patent &
Trademark Office ("USPTO") and which show both the current status of
and current title to the registration; (ii) filing a notice of
reliance, during the testimony period for presenting the opposer's or
opposers' case-in-chief, on an accompanying copy of the registration
which has been prepared and issued by the USPTO and which shows both
Opposition No. 113,393
5
Evidencing Opposers' intent for a
broad range of services or proposed
services, Opposers registered
"HEALTHAMERICA" for "management of entities
which provide prepaid health care services"
in Class 35; ["]prepaid financing of health
care services" in Class 36; and
["]providing health care services" in Class
42.

Such statement constitutes an admission by applicant that
opposers' pleaded registration for the mark "HEALTHAMERICA" is
subsisting and is owned by opposers. See West Point-
Pepperell, Inc. v. Borlan Industries Inc., 191 USPQ 53, 54
(TTAB 1976) [where opposer pleaded ownership of a registration
for the mark "ULTRA/VELLUX" for blankets, statement in
applicant's brief that "[t]he trademark 'ULTRA-VELLUX',
however, is registered simply for blankets" taken by the Board
"as an admission that such registration exists and is owned by
opposer"]. Thus, there is no issue as to priority in this
proceeding and, as further stated by applicant in its brief,

the current status of and current title to the registration; (iii)
introducing a copy of the registration, during the testimony period
for presentation of the case-in-chief, as an exhibit to the testimony
of a witness who has knowledge of the current status of and title to
the registration and who thus can establish that the registration is
still subsisting and is owned by the offering party or parties; or
(iv) having the adverse party stipulate to such facts. See Trademark
Rules 2.122(d)(1), 2.122(d)(2) and 2.123(b). Here, opposers annexed
to the notice of opposition only a plain copy of their pleaded
registration (which, in any event, is not in evidence since, in light
of Trademark Rule 2.122(c), such copy is merely an exhibit attached
to the pleading) and, as noted previously, opposers did not take
testimony or submit any other evidence during their initial testimony
period.

Opposition No. 113,393
6
the sole issue to be determined in this case "is whether the
parties' respective service marks will cause a 'likelihood of
confusion' to consumers" from contemporaneous use thereof in
connection with any of their respective services.
Upon consideration of the pertinent factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973), for determining whether a
likelihood of confusion exists, we find that, on this minimal
record, opposers have failed to satisfy their burden of
demonstrating that confusion as to source or sponsorship is
likely to occur with respect to the contemporaneous use by
applicant of the mark "HEALTHCARD AMERICA" and design for the
services of "healthcare financing, medical savings accounts,
and electronic claims filing" and the use by opposers of the
mark "HEALTHAMERICA" for the services of "management of
entities which provide prepaid health care services" and
"providing health care services." In particular, even though
we find that the respective marks, for the reasons discussed
below, are substantially similar, there is simply no evidence
which shows that applicant's healthcare financing, medical
savings accounts, and electronic claims filing services, which
on their face are distinctly different in nature from both
opposers' services of the management of entities which provide
prepaid health care services and the providing of health care
Opposition No. 113,393
7
services, are nevertheless so closely related in the mind of
the general purchasing public that consumers would be likely
to attribute such services to a common provider, merely
because the respective services all happen to involve some
aspects of health care. Instead, applicant's services appear
to relate to matters of health care insurance, while the
particular services of opposer, as noted above, respectively
relate to management of entities which provide prepaid health
care services and to the rendering of health care services by
medical professionals. In light of the distinctly different
nature of such services, a likelihood of confusion has not
been shown.4
However, as to the parties' contemporaneous use of
their respective marks in connection with the services of
"healthcare financing, medical savings accounts, and
electronic claims filing," on the one hand, and the services
of "prepaid financing of health care services," on the other,
it is clear that the latter services, which would be rendered

4 As our principal reviewing court has cautioned in this regard:

We are not concerned with mere theoretical
possibilities of confusion, deception, or mistake or with
de minimis situations but with the practicalities of the
commercial world, with which the trademark laws deal.

Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954
F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992), quoting from Witco
Chemical Co. v. Whitfield Chemical Co., 418 F.2d 1403, 1405, 164 USPQ
43, 44-45 (CCPA 1969), aff'g, 153 USPQ 412 (TTAB 1967).
Opposition No. 113,393
8
by opposers under their "HEALTHAMERICA" mark, are encompassed
by the former services of "prepaid healthcare financing,"
which would be offered by applicant under its "HEALTHCARD
AMERICA" and design mark.5 Moreover, while not the same,
applicant's services of "medical savings accounts" plainly are
related to opposers' "prepaid financing of health care
services" since, as opposers persuasively point out in their
initial brief, the respective services "will achieve the same
goal, i.e., the provision of health care coverage to the
public, even if the exact mode of service may not be
identical." As conceded by applicant in its brief, applicant
"focuses solely on healthcare financing vehicles" and has,
"[t]o date, ... concentrated most of its efforts on healthcare
financing through the use of Medical Savings Accounts," which
its customers assertedly "[m]ay access ... via a 'HealthCard
America' MasterCard.", Consequently, and although we agree
with applicant that its remaining services of "electronic
claims filing" have not been demonstrated by opposers to be

5 It is well settled, in this regard, that the issue of likelihood of
confusion must be determined in light of the services and/or goods
set forth in the opposed application and pleaded registration and, in
the absence of any specific limitations therein, on the basis of all
normal and usual channels of trade and methods of distribution for
such services and/or goods. See, e.g., CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198, 199 (Fed. Cir. 1983); Squirtco v. Tomy Corp., 697
F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983); and Paula Payne
Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973).

Opposition No. 113,393
9
closely related to their services of "prepaid financing of
health care services," it is still the case that, if applicant
were to provide "healthcare financing" and "medical savings
accounts" services under a mark which is the same as or
substantially similar to a mark under which opposers provide
the identical in part and otherwise closely related services
of "prepaid financing of health care services," confusion of
consumers as to the origin and/or affiliation of such services
would be likely to occur.
We therefore turn to consideration of the
similarities and dissimilarities in the respective marks when
considered in their entireties. It is necessary, however, to
keep in mind that, as pointed out in Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1701 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034
(1994), "[w]hen marks would appear on virtually identical ...
services, the degree of similarity [of the marks] necessary to
support a conclusion of likely confusion declines." While
applicant contends, in the present case, that its mark
"includes a prominent design" which makes such mark "highly
distinguishable from Opposers' mark," we concur with opposers
that, as stated in their brief (at 8):
Notwithstanding the requirement that
marks must be viewed in their entireties, a
particular feature or element of a mark may
Opposition No. 113,393
10
be accorded greater weight if the
impression upon purchasers would be
remembered and relied upon. Thus, if one
of the marks comprises both a word and a
design, the word portion is normally
accorded greater weight because it would be
used by prospective consumers to order the
... services or be spoken through word of
mouth. See In re Appetito Provisions Co.,
3 U.S.P.Q.2d 1553, 1554 (T.T.A.B. 1987);
Ceccato v. Manifattua Lane Gaetano Muzotto
[sic] & Figli, Spa., 32 U.S.P.Q.2d 1192,
1197 (T.T.A.B. 1994).

Here, it is the literal elements of applicant's
"HEALTHCARD AMERICA" and design mark which would be utilized
by consumers when asking about or otherwise referring to its
services, including its "healthcare financing" and "medical
savings accounts" services. Such elements are substantially
similar in sound, appearance and connotation to opposers'
"HEALTHAMERICA" mark, which is utilized, in particular, in
connection with the services of "prepaid financing of health
care." Such services, as noted previously, are identical in
part and otherwise closely related to the "healthcare
financing" and "medical savings account" services applicant
has admitted it intends to offer under its mark. Although
applicant's mark also includes the term "CARD," that term is
obviously descriptive of the credit cards which, as admitted
by applicant in its brief, will be utilized by subscribers to
its "healthcare financing" services and, in particular, its
"medical savings accounts" services. The presence of the term
Opposition No. 113,393
11
"CARD" in applicant's mark, like the design element therein,
is therefore insufficient to distinguish applicant's mark from
opposers' mark. See, e.g., In re Equitable Bancorporation,
229 USPQ 709, 710-11 (TTAB 1986) [mark "RESPONSE" for banking
services so resembles the mark "RESPONSE CARD" for banking
services rendered through 24-hour automatic teller machines as
to be likely to cause confusion]. Overall, when utilized in
connection with the respective services of the parties as
indicated above, applicant's "HEALTHCARD AMERICA" and design
mark engenders a commercial impression which is substantially
similar commercial impression to that projected by opposers'
"HEALTHAMERICA" mark.
We accordingly conclude that the contemporaneous use
of the parties' marks is likely to cause confusion as to
source or sponsorship of the parties' respective services. In
particular, consumers of health care financing services would
be likely to view applicant's substantially similar
"HEALTHCARD AMERICA" and design mark for its "medical savings
accounts" as an adjunct to, or a new line of services from,
the same source as the "prepaid financing of health care
services" rendered under opposers' "HEALTHAMERICA" mark.
Decision: The opposition is sustained and
registration to applicant is refused.