Health1 Insurance Services, Inc.

Trademark Trial and Appeal Board

Nov 26, 2007

No. 76630041 (T.T.A.B. Nov. 26, 2007)

Mailed:
Nov. 26, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Health1 Insurance Services, Inc.
________

Serial No. 76630041
_______

Scott J. Fields of National IP Rights Center, LLC for
Health1 Insurance Services, Inc.1

Scott M. Sisun, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Quinn, Grendel and Rogers, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Health1 Insurance Services, Inc., applicant herein,
seeks registration on the Principal Register of the mark
depicted below

1 The Board has been informed that Mr. Fields passed away during
the pendency of this appeal. Pursuant to the Board’s September
24, 2007 order, this decision and all further correspondence
shall be mailed to applicant itself at its address of record,
i.e., Health1 Insurance Services, Inc., 4606 FM 1960 West, Suite
400, Houston, TX 77069.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 76630041
2

for services recited in the application (as amended) as
“health insurance brokerage services in the field of
individual and group health insurance policies.”2
At issue in this appeal are the Trademark Examining
Attorney’s final refusals to register applicant’s mark on
the ground that the mark, as used in connection with the
recited services, so resembles two previously-registered
marks (owned by the same registrant) as to be likely to
cause confusion, to cause mistake or to deceive. Trademark
Act Section 2(d), 15 U.S.C. §1052(d). The first cited
registration is of the mark HEALTH ONE (in standard
character form; HEALTH disclaimed) for services recited in
the registration as “hospital and healthcare services.”3
The second cited registration is of the mark depicted below

2 Serial No. 766300441, filed on January 26, 2005. The
application is based on use in commerce under Trademark Act
Section 1(a), 15 U.S.C. §1051(a), and January 1995 is alleged in
the application to be the date of first use of the mark anywhere
and the date of first use of the mark in commerce.

3 Reg. No. 1307559, issued November 27, 1984. Affidavits under
Sections 8 and 15 accepted and acknowledged; renewed.

Ser. No. 76630041
3

(HEALTH disclaimed), for services recited in the
registration as “health care services.”4
Applicant and the Trademark Examining Attorney have
filed appeal briefs. After careful consideration of the
evidence of record5 and the arguments of counsel, we affirm
the refusals to register.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177

4 Reg. No. 2439860, issued on April 3, 2001. Affidavits under
Sections 8 and 15 accepted and acknowledged.

5 We sustain the Trademark Examining Attorney’s objection to the
evidence submitted by applicant for the first time with
applicant’s appeal brief. This evidence is untimely and shall be
given no consideration. Trademark Rule 2.142(d), 37 C.F.R.
§2.142(d). We also find that the “trademark.com” listing of
third-party marks submitted by applicant with its response to the
first Office action is entitled to no probative value. Third-
party registrations, to be considered, must be submitted in the
form of copies obtained from the Office’s database. See, e.g.,
In re Duofold Inc., 184 USPQ 638 (TTAB 1974).

Ser. No. 76630041
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USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
The first du Pont factor requires us to determine the
similarity or dissimilarity of the marks when viewed in
their entireties in terms of appearance, sound, connotation
and overall commercial impression. Palm Bay Imports, Inc.,
supra. The test, under the first du Pont factor, is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods
offered under the respective marks is likely to result.
The focus is on the recollection of the average purchaser,
who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975).
Applying these principles in this case, we find that
applicant’s mark is similar to both the standard character
mark depicted in the cited ’559 registration and the design
mark depicted in the cited ’860 registration.
Ser. No. 76630041
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In terms of appearance, applicant’s mark is similar to
the registered standard character mark despite the stylized
lettering in which applicant’s mark appears. The
registered ’559 mark is depicted in standard character
form, which entitles the registrant to display the mark in
any reasonable manner, including in the same or similar
stylized lettering in which applicant’s mark is depicted.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000). As for the cited ’860 mark, we find
that its design element would be viewed as a mere
background or carrier device for the words “Health One,”
and that the presence of this design element in the cited
registered mark does not suffice to distinguish the marks
in terms of appearance. Also, the presence in applicant’s
mark of the additional numeral “1” does not suffice to
distinguish applicant’s mark from the cited registered
marks when they are viewed in their entireties. The
similarity in appearance which results from the fact that
both marks begin with the word “health” and end with the
word “one” outweighs any dissimilarity which results from
the presence of the numeral “1” in applicant’s mark.
In terms of sound, we find that applicant’s mark is
identical to or at least highly similar to both of the
cited registered marks because they all begin and end with
Ser. No. 76630041
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the same words, i.e., “health” and “one.” The cited
registered marks would be pronounced as “health one.”
Applicant’s mark conceivably might be pronounced “health
one one,” given the presence of both the numeral “1” and
the word “one” in the mark. If so, we find that “health
one” and “health one one” are similar in terms of
pronunciation. However, we find that it is more likely
that the numeral “1” in applicant’s mark would not be
pronounced separately or in addition to the word “one”
immediately following it. The mark is constructed in such
a way that the numeral “1” and the word “one” would be
perceived together as a unit, connoting “the best.”
Consumers therefore would pronounce the mark simply as
“health one,” rather than the more awkward “health one
one,” which would diminish the mark’s laudatory
connotation. Applicant’s mark therefore is identical to
the cited registered marks in terms of pronunciation. But
even if applicant’s mark were to be pronounced “health one
one,” we find that it still would be similar to “health
one” in terms of pronunciation.
In terms of connotation, we find that the marks are
essentially identical. All of the marks connote a high or
the highest degree of “health.” The numeral “1” in
applicant’s mark would be seen as a mere repetition,
Ser. No. 76630041
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illustration or reinforcement of the spelled-out word
“one”; it adds nothing to the meaning of the mark as a
whole.
In terms of overall commercial impression, we find
that the marks are highly similar if not essentially
identical. The presence of the numeral “1” in applicant’s
mark merely repeats, illustrates, or reinforces the word
“one” before which it appears. It adds nothing significant
to the overall commercial impression of the mark. Neither
the slight stylization of applicant’s mark nor the design
element in the cited ’860 mark suffices to distinguish the
marks’ overall commercial impressions when the marks are
viewed in their entireties.
For these reasons, we find that the marks are similar
when viewed in their entireties. The first du Pont factor
therefore weighs in favor of a finding of likelihood of
confusion.
The second du Pont factor requires us to determine the
similarity or dissimilarity of the services as identified
in the application and in the cited registrations. It is
settled that it is not necessary that the services be
identical or even competitive in order to find that the
services are related for purposes of our likelihood of
confusion analysis. That is, the issue is not whether
Ser. No. 76630041
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consumers would confuse the services themselves, but rather
whether they would be confused as to the source of the
services. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
It is sufficient that the services be related in some
manner, or that the circumstances surrounding their use be
such, that they would be likely to be encountered by the
same persons in situations that would give rise, because of
the marks used thereon, to a mistaken belief that they
originate from or are in some way associated with the same
source or that there is an association or connection
between the sources of the respective services. See In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991); and In re International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1978).
The Trademark Examining Attorney has made of record
eleven use-based third-party registrations which include in
their recitations of services both health insurance
brokerage services of the type recited in applicant’s
application and health care services of the type recited in
the cited registrations. Although such registrations are
not evidence that the marks shown therein are in use or
that the public is familiar with them, they nonetheless
have probative value to the extent that they serve to
Ser. No. 76630041
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suggest that the services listed therein are of a kind
which may emanate from a single source under a single mark.
See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993); and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467
(TTAB 1988). We find that this evidence suffices to
establish that the services recited in applicant’s
application and the services recited in the cited
registrations are similar and related, for purposes of the
second du Pont factor.
Because applicant’s mark is similar to each of the
cited registered marks, and because applicant’s services as
recited in the application are similar and related to the
services recited in each of the cited registrations, we
conclude that a likelihood of confusion exists in both
cases. To the extent that any doubts might exist as to the
correctness of this conclusion, we resolve such doubts
against applicant. See In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio)
Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In
re Martin’s Famous Pastry Shoppe, Inc., supra.
Decision: The refusals to register are affirmed.

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