Health New England, Inc.Download PDFTrademark Trial and Appeal BoardSep 26, 201986984307 (T.T.A.B. Sep. 26, 2019) Copy Citation THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: September 26, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Health New England, Inc. _____ Serial No. 86984307 _____ Nicholas J. Tuccillo of Grogan, Tuccillo & Vanderleeden, LLP, for Health New England, Inc. Cynthia R. Smith, Trademark Examining Attorney, Law Office 107, J. Leslie Bishop, Managing Attorney. _____ Before Kuczma, Lynch, and Coggins, Administrative Trademark Judges. Opinion by Coggins, Administrative Trademark Judge: Health New England, Inc. (“Applicant”) seeks registration on the Principal Register of the mark HEALTH NEW ENGLAND BE HEALTHY, in standard characters and with a claim of acquired distinctiveness as to HEALTH NEW ENGLAND, for “underwriting insurance for prepaid health care” in International Class 36.1 1 Application Serial No. 86984307 filed on January 11, 2016, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide intention to use the mark in commerce. Serial No. 86984307 - 2 - I. Evidentiary Issue Applicant attached to its brief two screen shots of subpages from Applicant’s website, neither of which had been submitted previously. See Brief, Exhibits A and B (4 TTABVUE 4-7). The Examining Attorney objected to the new material. Examiner’s Brief, unnumbered p. 2 (7 TTABVUE 2). Because the evidentiary record in an application should be complete prior to the filing of an ex parte appeal to the Board, the Examining Attorney’s objection to the website subpage evidence first submitted with the appeal brief is sustained. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A., 109 USPQ2d 1593, 1596 (TTAB 2014). Accordingly, we give no consideration to the subpage evidence submitted for the first time with Applicant’s brief, or any arguments related thereto. II. Background Applicant initially based the application on its allegation of a bona fide intent to use the mark in commerce; and, after a notice of allowance issued, Applicant filed a statement of use with the specimen shown below (the “Original Specimen”)2 described as a “website page”3: 2 March 22, 2018 Statement of Use at TSDR 5. All citations to TSDR are to the downloadable .pdf version of the document. 3 Id. at TSDR 1. Serial No. 86984307 - 3 - The Trademark Examining Attorney refused registration under Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127, on the ground that the specimen does not show the applied-for mark in use in commerce in connection with the services specified in the Statement of Use because “the specimen makes no reference to insurance underwriting” services.4 In response thereto, Applicant made no argument nor provided any explanation, but submitted the following substitute specimens (the “Website Substitute Specimens”)5 described as three “website page[s] showing services”6: 4 April 11, 2018 Office Action at TSDR 2. 5 April 16, 2018 Response to Office Action at TSDR 6-8. 6 Id. at TSDR 2. Serial No. 86984307 - 4 - Serial No. 86984307 - 5 - The Examining Attorney rejected the substitute specimens and made final the refusal under Sections 1 and 45 because “the substitute specimen[s] also fail[] to show use of the applied-for mark in connection with the relevant insurance underwriting services.”7 When the refusal was made final, Applicant appealed, requested reconsideration,8 and stated that “[s]oley for the purpose of advancing the . . . application and without conceding to the validity of the rejection”9 it submitted the following substitute 7 May 15, 2018 Office Action at TSDR 2. 8 The subject application is a divisional “child.” See TMEP § 1110 (Oct. 2018). The original application included the Class 36 underwriting services at issue in this appeal and Class 44 health maintenance organization services. In addition to requesting reconsideration after final refusal, Applicant filed a request to divide out the Class 36 services so the original application could proceed to issuance of a registration for the Class 44 services – for which Applicant was able, after receiving the same refusal at issue in this appeal, to successfully demonstrate with a substitute specimen use of the mark in commerce. 9 November 15, 2018 Request for Reconsideration at TSDR 6. Serial No. 86984307 - 6 - specimen (the “Brochure Substitute Specimen”) described as “screenshot from a website” and a “website page”10: The Examining Attorney denied the request for reconsideration, finding that the substitute specimen did not “demonstrate use of the mark HEALTH NEW ENGLAND BE HEALTHY in connection with insurance underwriting services.”11 Thereafter, the appeal was resumed. As explained below, we affirm the refusal to register. 10 November 15, 2018 Request for Reconsideration at TSDR 2, 7. As observed by the Examining Attorney, although Applicant described this specimen as coming from a website, it instead appears to be a paper brochure based on the trifold configuration and QR code. See Examiner’s Brief, unnumbered p. 3 (7 TTABVUE 3). 11 December 18, 2018 Request for Reconsideration Denied at TSDR 1. Serial No. 86984307 - 7 - III. Applicable Law “The Trademark Act ‘provides for registration of a mark based on use of the mark in commerce.’” In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039, *12 (TTAB 2019) (quoting In re Siny Corp., 920 F.3d 1331, 2019 USPQ2d 127099, *2 (Fed. Cir. 2019)). Under Section 45 of the Trademark Act, 15 U.S.C. § 1127, a service mark is used in commerce “when it is used or displayed in the sale or advertising of services.” “A service mark specimen must show the mark as used in the sale or advertising of the services.” Trademark Rule 2.56(b)(2), 37 C.F.R. § 2.56(b)(2). An acceptable specimen must show “some direct association between the offer of services and the mark sought to be registered therefor.” In re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973). “For specimens showing the mark in advertising the services, ‘[i]n order to create the required ‘direct association,’ the specimen must not only contain a reference to the service, but also the mark must be used on the specimen to identify the service and its source.’” In re WAY Media, Inc., 118 USPQ2d 1687 (TTAB 2016) (quoting In re Osmotica Holdings Corp., 95 USPQ2d 1666, 1668 (TTAB 2010)). A specimen that shows “only the mark with no reference to, or association with, the services does not show service mark usage.” In re Pitney Bowes, Inc., 125 USPQ2d 1417, 1419 (TTAB 2018). “To determine whether a mark is used in connection with the services described in the [statement of use], a key consideration is the perception of the user.” In re JobDiva, Inc., 843 F.3d 936, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016). The evidence is reviewed to determine whether use of the mark “‘sufficiently creates in the minds Serial No. 86984307 - 8 - of purchasers an association between the mark”’ and the applied-for services. Id. (quoting In re Ancor Holdings LLC, 79 USPQ2d 1218, 1221 (TTAB 2006)). We may consider an applicant’s explanations as to how the specimen is used, along with any other available evidence in the record that shows how the mark is actually used. See In re Cardio Grp., LLC, 2019 USPQ2d 227232, *2 (TTAB 2019) (“Both precedent and examination guidance make clear that in assessing the specimens, consideration must be given not only to the information provided by the specimen itself, but also to any explanations offered by Applicant clarifying the nature, content, or context of use of the specimen that are consistent with what the specimen itself shows.”); In re Int’l Envtl. Corp., 230 USPQ 688, 691 (TTAB 1986). To assess whether the specimens of record make a direct association or reference to the services, we first look to the nature of the “underwriting insurance for prepaid health care” services. Underwriting is “[t]he process of determining a person’s insurability in terms of life, liability, home, and other insurance policies and whether it will accept an application for insurance;”12 and “[i]nsurance: [e]valuate a risk to assume the liability for specified future events and to match the risk with appropriate rate of premium.”13 According to Applicant, “[a]s is readily understood by insurance brokers for any type of insurance, selling insurance policies to any customer 12 THE FREE DICTIONARY, medical-dictionary.thefreedictionary.com/underwriting (accessed September 24, 2019). The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format. Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1374 (Fed. Cir. 2018); In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016). 13 BUSINESS DICTIONARY, businessdictionary.com/definition/underwrite (accessed September 24, 2019). Serial No. 86984307 - 9 - necessarily involves submitting an application for coverage on behalf of such customer, which is reviewed by an underwriter to determine whether the prospective customer meets eligibility requirements, etc.” Brief, unnumbered p. 1 (4 TTABVUE 2). A. The Original Specimen The Examining Attorney argues that the Original Specimen “fails to directly reference any services.” Examiner’s Brief, unnumbered p. 3 (7 TTABVUE 3). Applicant contends that the Original Specimen prominently shows the mark on Applicant’s webpage, which contains a “brokers” link in close association with the mark, and argues: [A]ll brokers understand that underwriting is an inherent part of obtaining insurance for a client. In the present case, therefore, insurance brokers visiting the Applicant’s website and seeing the broker link expect that insurance underwriting services are part of the services offered by the Applicant. Brief, unnumbered p. 1 (4 TTABVUE 2). However, Applicant provided no evidence to support its assertions relating to what brokers visiting Applicant’s website would understand or expect. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005) (“Attorney argument is no substitute for evidence.”)). Serial No. 86984307 - 10 - A broker is “one who acts as an intermediary: such as . . . an agent who negotiates contracts of purchase and sale (as of real estate, commodities, or securities).”14 The single word “brokers” on the Original Specimen does not indicate that Applicant underwrites insurance for prepaid health care, and would not be perceived as a reference to underwriting services. There is no reference to insurance services in general or underwriting services specifically; and the jump from a one-word occurrence of “brokers” to underwriting insurance for prepaid health care is unsupported. The Original Specimen contains no reference that would create an association between underwriting services and the mark HEALTH NEW ENGLAND BE HEALTHY. Accordingly, we find a lack of association on the Original Specimen between HEALTH NEW ENGLAND BE HEALTHY and any underwriting service offered by Applicant.15 B. The Website Substitute Specimens The Examining Attorney characterizes the second webpage of the Website Substitute Specimens as an updated version of the Original Specimen which is otherwise unacceptable because this updated webpage fails to directly reference the services; and observes that the first and third webpages respectively allow 14 MERRIAM-WEBSTER, meriam-webster.com/dictionary/broker (accessed September 24, 2019). 15 Moreover, we note that the Original Specimen was submitted March 22, 2018. We agree with the Examining Attorney’s assessment that the statement on this specimen that “Health New England Be Healthy is becoming BeHealthy Partnership effective March 1, 2018” – a date prior to submission of the specimen – leads prospective consumers to perceive either that Applicant no longer uses the mark or that the advertised services are no longer provided under the mark. Serial No. 86984307 - 11 - “consumers to ‘FIND A PROVIDER’ or ‘ENROLL,’ [but] neither . . . adequately display[s] the mark in connection with the relevant services.” Examiner’s Brief, unnumbered p. 3 (7 TTABVUE 3). Applicant does not point out any specific reference or association to the services on these specimens, but rather makes the unsupported generalization that the specimens “clearly demonstrate that the healthnewengland.org website has used, as of the claimed date of first use, the . . . mark in connection with the provision of health insurance. . . . Thus, it is patently clear that the provided specimens show the . . . mark used in connection with the provision of ‘underwriting insurance for prepaid health care.’” Brief, unnumbered p. 2 (4 TTABVUE 3). As an initial matter, we note that the third webpage provided in the Website Substitute Specimens does not display the mark, and Applicant provided no additional evidence or explanation as to how any content from that webpage could be associated with the proposed mark. As to the second webpage, once again, the single word “brokers” does not indicate that Applicant underwrites insurance for prepaid health care, and would not be perceived as a reference to underwriting services. There is no mention or reference to such services; indeed, this webpage appears to discuss healthcare services – not insurance services. Similarly, the first webpage discusses health care providers and becoming a member of Applicant’s health maintenance organization; there is no direct association or reference to underwriting services. Accordingly, we find a lack of association on the Website Substitute Specimens Serial No. 86984307 - 12 - between HEALTH NEW ENGLAND BE HEALTHY and any underwriting service offered by Applicant. C. Brochure Substitute Specimen The Examining Attorney notes that mark “appears in fine print” in two places on the Brochure Substitute Specimen. “The first reference may refer to a call center, support desk, or even a trade name. The second reference refers vaguely to ‘benefits offered to members’ and might refer to any number of perks conferred to people based upon affiliation with a particular organization or club.” Overall, “the brochure fails to directly connect the applied-for mark with insurance underwriting services for prepaid health care.” Examiner’s Brief, unnumbered p. 3 (7 TTABVUE 3). Applicant does not point to any specific reference or association to the underwriting services, but rather makes the same unsupported generalization that the specimen “clearly demonstrate[s] that the healthnewengland.org website has used, as of the claimed date of first use, the . . . mark in connection with the provision of health insurance. . . . Thus, it is patently clear that the provided specimens show the . . . mark used in connection with the provision of ‘underwriting insurance for prepaid health care.’” Brief, unnumbered p. 2 (4 TTABVUE 3). We see no such clear – or even a tenuous – connection with underwriting services. Both occurrences of the mark are within the blue text box that runs across the bottom of a portion of the brochure. The first occurrence of the mark informs readers that they may “learn more about Health New England Be Healthy and all the benefits offered to members” by calling a toll-free number or visiting Applicant’s webpage. The Serial No. 86984307 - 13 - second occurrence of the mark tells readers how to become a member of Applicant’s health maintenance organization and how to learn more about health plan options, again by calling a toll-free number or visiting Applicant’s webpage. There is no direct association or reference to underwriting services. Accordingly, we find a lack of association on the Brochure Substitute Specimen between Applicant’s proposed mark HEALTH NEW ENGLAND BE HEALTHY and any underwriting services offered by Applicant. IV. Decision None of Applicant’s specimens demonstrates use of the mark in a manner that creates in the minds of potential customers a direct association between the mark and the recited services. We therefore affirm the refusal to register. Copy with citationCopy as parenthetical citation