Health New England, Inc.

Trademark Trial and Appeal Board

Sep 26, 2019

86871517 (T.T.A.B. Sep. 26, 2019)

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. 86871517
_____

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 composite word and design mark
(with a claim of acquired distinctiveness as to HEALTH NEW ENGLAND) for
“underwriting insurance for prepaid health care” in International Class 36, and
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“health care in the nature of health maintenance organizations” in International
Class 44.1
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 5-8). The Examining Attorney objected to the new material. Examiner’s
Brief, unnumbered p. 3 (7 TTABVUE 4). 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 website 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

1 Application Serial No. 86871517 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. The application contains the following description of
the mark: “The mark consists of two concave wings touching one another at opposing ends
forming an irregular oval to the left of the wording ‘HEALTH NEW ENGLAND’. To the right
is a vertical bar preceding the wording ‘BE HEALTHY’. Color is not claimed as a feature of
the mark.”
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statement of use with the specimen shown below (the “Original Specimen”)2 described
as a “website page”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 mark in use in commerce in connection with the Class 36 or 44
services specified in the Statement of Use because “the specimen makes no reference
to insurance underwriting or health maintenance organizations.”4 In response
thereto, Applicant made no argument nor provided any explanation, but submitted

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.
4 April 11, 2018 Office Action at TSDR 2.
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the following substitute specimens (the “Substitute Specimens”)5 each described as a
“website page showing services”6:

5 April 16, 2018 Response to Office Action at TSDR 6-7.
6 Id. at TSDR 1, 2. Although Applicant described each of these specimens as coming from a
website, the Examining Attorney characterized them as “a paper pamphlet and cover of an
online newsletter,” respectively. See Examiner’s Brief, unnumbered p. 4 (7 TTABVUE 5).
Based on the layout, content, and QR code, these appear to be print advertisements.
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The Examining Attorney rejected the substitute specimens and made final the
refusal under Sections 1 and 45 as to the services in both classes. Specifically, the
Examining Attorney explained that the substitute specimens “[do] not show proper
use of the . . . mark in commerce,” noted that the elements of the composite mark
appeared “spatially separated to such a degree that they each appear as separate and
distinct marks” on the Substitute Specimens, and concluded that “the mark in the
drawing is not a substantially exact representation of the mark on the specimen[s].”7
When the refusal was made final, Applicant appealed, requested reconsideration,
and submitted two additional specimens for each class, excerpted below (the
“Reconsideration Specimens”). For Class 44:8
&

7 April 26, 2018 Office Action at TSDR 2.
8 October 26, 2018 Request for Reconsideration at TSDR 9-10.
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Applicant argued that the Class 44 Reconsideration Specimens “show the mark in
close association with clickable links and information relating to . . . operation of
[Applicant’s] Health Maintenance Organization, as offered through [its] BEHealthy
Partnership program.”9 And for Class 36:10
&
Applicant argued that the Class 36 Reconsideration Specimens “are accessed
through” the first Class 44 specimen (above left), and “[a]lthough” the mark is “not

9 Id. at TSDR 1.
10 Id. at TSDR 7-8.
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present on” the Class 36 “specimens . . . directly, [Applicant’s] mark is reflected on
the [preceding] source page” (i.e., the first Class 44 specimen, above left) “where the
top-level links to [the Class 36] specimens . . . are located. Thus . . . customers would
. . . be presented with [Applicant’s] mark as a necessary stop to delving further into
the myriad of services offered by Applicant[], including the underwriting services
accessed via the ‘broker’ or ‘provider’ links, as shown in” the Class 44 Reconsideration
Specimens above.11
The Examining Attorney granted the request for reconsideration as to Class 44,
but denied the request as to Class 36, finding Applicant’s analysis and arguments
unpersuasive for Class 36 and that the “mark does not appear on the [Class 36
Reconsideration Specimens].”12 Thereafter, the appeal was resumed. As explained
below, we affirm the refusal to register for Class 36.
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

11 Id. at TSDR 1.
12 November 19, 2018 Request for Reconsideration Denied in Part at TSDR 1.
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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
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
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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 Class 36 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;”13 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.”14 According to Applicant, “[a]s is readily understood by insurance
brokers for any type of insurance, selling insurance policies to any customer
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.”15
A. Original Specimen
The Examining Attorney argues that the Original Specimen, submitted March 22,
2018, “fails to directly reference any services” and characterizes “the manner in which
the mark is displayed” (i.e., prominently conveying that “Health New England Be

13 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).
14 BUSINESS DICTIONARY, businessdictionary.com/definition/underwrite (accessed September
24, 2019).
15 4 TTABVUE 2-3.
Serial No. 86871517
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Healthy is becoming BeHealthy Partnership effective March 1, 2018”) as “inform[ing]
the consumer that [the mark] is no longer in use, or that the relevant services are no
longer provided under the mark.” Examiner’s Brief, unnumbered p. 4 (9 TTABVUE
5). Although Applicant does not mention the Original Specimen in its brief, and
therefore appears to concede that this specimen does not show use of the mark in
commerce for the Class 36 services, for completeness we review that specimen.
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).”16 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, which appears only once on
this specimen and far removed from the “brokers” link. Accordingly, we find a lack of
association on the Original Specimen between the mark
and any underwriting service offered by Applicant.17

16 MERRIAM-WEBSTER, meriam-webster.com/dictionary/broker (accessed September 24,
2019).
17 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
Serial No. 86871517
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B. Substitute Specimens
The Examining Attorney observes that “[n]either of the [Substitute Specimens]
display the applied-for mark . . . itself, or in connection with insurance underwriting
services.” Examiner’s Brief, unnumbered p. 4 (9 TTABVUE 5). Although Applicant
does not mention the Substitute Specimens in its brief, and therefore appears to
concede that these specimens do not show use of the mark in commerce for the Class
36 services, for completeness we review these specimens.
The mark does not appear on the Substitute Specimens; therefore, these
specimens do not and cannot show use of the mark in commerce for any service.
Accordingly, we find a lack of association on the Substitute Specimens between the
mark and any underwriting service offered by Applicant.
C. Reconsideration Specimens
The Examining Attorney observes that Applicant submitted “four screenshots
from [A]pplicant’s website. Two screenshots [submitted for Class 44] reference the
mark and state that it is no longer in use effective March 1, 2018. The other two
screenshots [submitted for Class 36] fail to show use of the applied-for mark in
connection with the relevant services.” Examiner’s Brief, unnumbered p. 4 (9
TTABVUE 5). Applicant contends that the first Class 44 Reconsideration Specimen
prominently shows the mark on Applicant’s webpage and contains a link titled
“brokers.” Based on those two elements, Applicant argues:

that Applicant no longer uses the mark or that the advertised services are no longer provided
under the mark.
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[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 brokers link expect that insurance
underwriting services are part of the services offered by the
Applicant.
Brief, p. 2 (7 TTABVUE 3). Applicant also argues that the first Class 36
Reconsideration Specimen is “the Brokers subpage that is displayed when following
the ‘BROKERS’ link” from the first Class 44 Reconsideration Specimen, and,
“[n]otably, the Brokers subpage clearly shows the link/term ‘Underwriting’ under the
‘Tools and Resources’ section.” Id., p. 2 (7 TTABVUE 3).
We note initially that Applicant’s mark is not present on either of the Class 36
Reconsideration Specimens. We also note that the word “underwriting” appears on
the first Class 36 Reconsideration Specimen (i.e., the “brokers” subpage). The smaller
text next to the word “underwriting” is unclear due to the quality of the image
submitted by Applicant.18
As with the Original Specimen, the single word “brokers” on the Class 44
Reconsideration Specimens 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 underwriting services specifically on this webpage;
and the jump from a one-word occurrence of “brokers” to underwriting insurance for
prepaid health care is unsupported. Applicant provided no evidence to support its

18 Applicant “has a duty to ensure that the evidence it submits is legible.” See Alcatraz Media,
Inc. v. Chesapeake Marine Tours Inc. dba Watermark Cruises, 107 USPQ2d 1750, 1758
(TTAB 2013).
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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.”)). On
this record, the Class 44 Reconsideration Specimens by themselves contain no
reference that would create an association between underwriting services and the
mark.
Applicant contends that its “brokers” subpage (i.e., the first Class 36
Reconsideration Specimen which does not show the mark) is proximate to its
preceding page (i.e., the first Class 44 Reconsideration Specimen which contains the
mark) and is displayed when users follow the clickable “brokers” link from that
preceding page. As Applicant points out, there is “no requirement that a single
webpage of a multi-page website show the mark used in connection with each term
of the” recitation of services; rather, the mark and a reference to services shown on
separate but proximate webpage can convey the required association. Brief, p. 3 (7
TTABVUE 4). Applicant contends that consumers would associate the mark on the
first Class 44 Reconsideration Specimen with the reference to underwriting on the
first Class 36 Reconsideration Specimen.
Whether Applicant’s multiple webpages create such an association between its
mark and underwriting services is a question of fact. Cf. In re Azteca Sys., Inc., 102
USPQ2d 1955, 1957 (TTAB 2012) (“Whether a specimen is a display associated with
the goods is a question of fact.”). Because there is no evidence bearing on the reaction
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of the purchasing public to Applicant’s use of , we must rely
on our own analysis of the webpages to determine whether consumers would perceive
as a service mark identifying Applicant’s Class 36
“underwriting insurance for prepaid health care” services. In re Signal Cos., Inc., 228
USPQ 956, 957 (TTAB 1986); In re Wakefern Food Corp., 222 USPQ 76, 77 (TTAB
1984). Although the mark appears on the first webpage (i.e., the Class 44
Reconsideration Specimens), consumers would view it only as a soon-to-be defunct
name for what will become BeHealthy Partnership. In addition, Applicant’s mark is
not used in close proximity to the “brokers” link that leads to a subpage where
Applicant refers to underwriting services (but on which it doesn’t use the mark or
even the BeHealthy Partnership mark). Thus, consumers are unlikely to make an
association between and any content on the linked
webpages. Regardless, as noted above, the single word “brokers” on the Class 44
Reconsideration Specimens does not indicate that Applicant underwrites insurance
for prepaid health care, would not itself be perceived as a reference to underwriting
services, and does not function as an offer to enter into an arrangement for
underwriting insurance for prepaid health care.
In support of its argument that its offer of underwriting services on the “brokers”
subpage creates an association between the mark which appears on a preceding
webpage, Applicant points to Example 4 of TMEP § 1301.04(i) (Examples of
Acceptable Service-Mark Specimens). Reliance on this example is inapposite.
Example 4 involves software as a service (SAAS) services featuring software for use
Serial No. 86871517
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in staff management and related scheduling tasks, and presents as the specimens an
online portal (or launch screen) and a sign-in screen through which one must log in
to access the software services. The TMEP explains that the
[m]ark-services association is present because the mark
appears on the launch screen where it is customary in such
industry to place the mark under which the services are
offered and such placement is recognized as the
introduction of the online services; and the mark also
appears on the sign-in screen where it is customary to
input credentials to gain access to online services. The
context in which the mark is used, i.e., on the title and sign-
in screens, creates the mark-services connection (since
using such screens is common practice for rendering such
services) and implies that the services are available and
rendered once the user initiates access to the services by
logging in. The launch screen alone is acceptable because
it is generally known that such screens are used to initiate
the start up of or access to online services. The sign-in
screen is also acceptable on its own since it is a generally
known means of accessing online services. The mark is also
displayed on another screen which shows the mark while
the services are being performed and, thus, the proximity
of the mark to the services conveys a connection
TMEP § 1301.04(i) (Example 4). This is not the situation with Applicant’s
straightforward website Reconsideration Specimens. There is no software launch or
sign-in screen. The attempt at analogizing a software launch screen for SAAS services
to a regular webpage linking to a subpage mentioning underwriting services is
flawed.
Upon close consideration of Applicant’s Reconsideration Specimens and
arguments related thereto, we find that use of the mark on the first page is not
associated with reference to the underwriting services on the subpage (where other
marks are used) such that users would sufficiently perceive an association between
Serial No. 86871517
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use of the mark on one page and services on another. Accordingly, we find a lack of
association on the Reconsideration Specimens between and
any underwriting service offered by Applicant.
IV. Decision
None of Applicant’s specimens demonstrate use of the mark in a manner that
creates in the minds of potential customers a direct association between the mark
and the recited Class 36 services. We therefore affirm the
refusal to register the mark in Class 36. The application will proceed to registration
in due course for the Class 44 services (to which the refusal does not apply).