Home Instead, Inc.

Trademark Trial and Appeal Board

Sep 26, 2013

No. 85326641 (T.T.A.B. Sep. 26, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
September 26, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Home Instead, Inc.
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Serial No. 85326641
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Wade Kerrigan and Kris Kappel of Husch Blackwell LLP for Home Instead, Inc.

Charles L. Jenkins, Jr., Trademark Examining Attorney, Law Office 105 (Thomas
G. Howell, Managing Attorney).
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Before Quinn, Taylor and Gorowitz Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Home Instead, Inc., (“applicant”) seeks registration on the Principal Register
of the mark CARE: CHANGING AGING THROUGH RESEARCH AND
EDUCATION (in standard character format) for “training of care providers in the
field of delivery of care to seniors in their homes” in International Class 41.1 At the
request of the examining attorney, applicant disclaimed the term CARE apart from
the mark as shown.

1 Application Serial No. 85326641, filed on May 20, 2011, and alleging a bona fide intention
to use the mark in commerce pursuant to Section 1(b) of the Trademark Act.
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Registration has been refused on the ground that a likelihood of confusion
exists under Section 2(d) of the Trademark Act, 15 U.S.C § 1052(d), between
applicant’s mark and the mark CHANGING AGING (AGING disclaimed) shown in
Registration No. 3588405 for “educational services, namely, conducting lectures and
seminars in the field of care for the elderly” in International Class 41.2
After the refusal was made final, applicant appealed and requested
reconsideration of the refusal. The request for reconsideration was denied on June
17, 2012, and this appeal was resumed on June 28, 2012. Both applicant and the
examining attorney filed briefs. We affirm.
Preliminarily, we note that the “webpage of the Registrant,” sought to be
introduced for the first time as Exhibit A to applicant’s reply brief, is manifestly
untimely. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), provides that “[t]he
record in the application should be complete prior to the filing of an appeal.” The
Board will ordinarily not consider additional evidence filed with the Board by the
appellant or by the examiner after the appeal is filed. Accordingly, the webpage has
not been considered in this decision.3
We turn then to the merits of this appeal. Our determination under Section
2(d) is based on an analysis of all of the probative facts in evidence that are relevant
to the factors bearing on the issue of 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

2 Registration No. 3588405, issued March 10, 2009 and asserting August 30, 2007, as the
date of first use of the mark anywhere and in commerce.
3 We add that even if considered, it would not change the outcome of this decision.
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Majestic Distilling Company, Inc., 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 similarities between the goods and/or
services. See 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
differences in the marks”). These factors, and any other relevant du Pont factors in
the proceeding now before us, will be considered in this decision.
We first consider the du Pont factor of relatedness of the services and
compare applicant’s “training of care providers in the field of delivery of care to
seniors in their homes” with the “educational services, namely, conducting lectures
and seminars in the field of care for the elderly,” as recited in the cited registration.
In making our comparison, it is well settled that the question of likelihood of
confusion must be determined based on an analysis of the services recited in
applicant’s application vis-à-vis the services recited in the cited registration.
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed.
Cir. 1992); The Chicago Corp. v. North American Chicago Corp., 20 USPQ 2d 1715
(TTAB 1991). Further, it is a general rule that the services do not have to be
identical or directly competitive to support a finding that there is a likelihood of
confusion. It is sufficient if the respective services are related in some manner
and/or that the conditions surrounding their marketing are such that they would be
encountered by the same persons under circumstances that could, because of the
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similarity of the marks used in connection therewith, give rise to the mistaken
belief that they emanate from or are associated with a single source. In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993); In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Based on the identifications themselves, we find applicant’s services are, at
least, very similar to and complementary in purpose to registrant’s services, both
providing instruction and information on how to care for the elderly. Further, both
applicant’s and registrant’s identifications are so broadly worded that the services
overlap. More particularly, applicant’s “training of care providers in the field of
delivery of care to seniors in their homes” may be provided in the form of lectures
and seminars, or registrant’s “lectures and seminars in the field of care for the
elderly” may feature the training of care providers to care for the elderly in their
homes. Further, the evidence of record also indicates that applicant’s services are
likely to be perceived as originating from the same source as registrant’s services.
Specifically, the examining attorney made of record various use-based, third-party
registrations for marks which show that services of the type identified in both the
application and the cited registration are registered by a single entity under the
same mark. Third-party registrations which individually cover a number of
different items and which are based on use in commerce serve to suggest that the
listed goods and/or services are of a type which may emanate from a single source.
In re Albert Trostel & Sons Co., supra. These registrations include, for example: 4

4 Based on the definition of “training,” defined as “the process of learning the skills you
need to do a particular job or activity,” (http://dictionary.cambridge.org), we have considered
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Registration No. 3549149 for the mark SENSATIONAL
AFTER 60 for, inter alia, “Educational services, namely,
… conducting educational conferences, classes, seminars,
workshops, speeches and training courses, seminars and
workshops in the fields of aging, seniors, health, wellness,
generational women [sic] and men’s issues …”;
Registration No. 4110220 for the mark STUCK IN THE
MIDDLE for, inter alia, “conducting workshops, seminars,
classes and presentations in the field of elder care”;
Registration No. 3854248 for the mark ELDER
ELEMENTS for, inter alia, “Educational services, namely,
conducting workshops, classes, and group training
sessions for personal service agencies on the subject of
non-medical elder care and for individuals, families and
businesses …”;
Registration No. 3610693 for the mark E-SENIOR
SERVICES for, inter alia, “Educational services, namely,
providing classes, seminars, and workshops in the field of
elder care”;
Registration No. 3995631 for the mark HOSPICE
BRAZOS VALLEY for, inter alia, “educational and
training services, namely, providing seminars,
conferences, workshops, programs, classes, training and
instruction, all of which are provided in the fields of …
elder care …”;
Registration No. 3964202 for the mark LIFESTYLE EAP
for, inter alia, “Training services in the fields of … elder
care…; providing educational workshops and seminars on
… elder care …”;
Registration No. 2980199 for the mark CENTER FOR
LEADERSHIP AND LEARING IN PALLIATIVE CARE
for, inter alia, “Training services in the fields of … elder
care…; educational services, namely, conducting training,
lectures, staff in-servicing, community education,
research, physician education, and practicums in the
fields of … elder care …”; and

the language “conducting classes” or “providing classes” as synonymous with the term
“training.”
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Registration No. 4028530 for the mark BRINGING
WARMTH TO THE TABLE for, inter alia, “Educational
services, namely, providing live and on-line classes,
seminars, training and workshops in the fields of food
service and dining service for … elder care.”
The examining attorney also made of record internet materials which show
that services of the type identified by applicant and registrant are offered on the
same website. For example, the website at http://www.seniorcaretraining.com
discusses elevating eldercare through education and training and offers in service
education, “with presentations tailored to the specific learning needs of your group”
including “keynote addresses and professional conferences.” The website at
(http://redcross.org/classes/nurse-assistant-training) discusses Nurse Assistant
Training (NAT) offered by the American Red Cross and states that “[t]he first part
of our nurse assistant training takes place in the classroom. During classroom
training, students will learn all aspects of patient care, through lectures as well as
hands-on demonstrations and practice.”5
Based on the nature of the services as identified in applicant’s application
and the cited registration, and on the third-party evidence of record, we conclude
that applicant’s and registrant’s respective services are closely related, if not
overlapping, services featuring instruction on the care of the elderly and that these
services are often offered under a single mark by various entities.
Applicant attempts to distinguish its services from those of registrant by
arguing that it provides information in the field of non-medical in-home personal

5 We consider “patient care” to include care of the elderly.
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services for senior citizens, including providing care assistance of activities of daily
living and companionship services by applicant or applicant’s franchisees and
companionship services and assistance to seniors in their residences, whereas
registrant’s lectures and seminars on the topic of the care of the elderly merely
convey information regarding Dr. William Thomas’ opinions and facts supporting
these opinions. However, as stated above, we are constrained to compare the
services based on the recitations in applicant’s application and the cited
registration. See e.g., In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB
1986) (an applicant may not restrict the scope of the goods covered in the cited
registration by argument or extrinsic evidence).
Further, in the absence of any limitations in the recitations of services in
applicant’s application and the cited registration as to channels of trade and classes
of purchasers, we must presume that the respective services will be offered in the
usual channels of trade and to the usual classes of purchasers, including consumers
seeking instruction in the care of the elderly. Thus, at a minimum, the channels of
trade and classes of purchasers overlap. In re Elbaum, 211 USPQ 639 (TTAB 1981).
We next consider the marks and compare applicant’s mark CARE:
CHANGING AGING THROUGH RESEARCH AND EDUCATION with the cited
registered mark CHANGING AGING. In determining the similarity or
dissimilarity of marks, we must consider them in their entireties in terms of sound,
appearance, meaning and commercial impression. See Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The
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test 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 impressions that confusion as to the source of the services
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). That is, the purchaser’s fallibility of memory over a period
of time must be kept in mind. See Grandpa Pidgeon’s of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA 1973); Spoons Restaurant Inc. v.
Morrison Inc., 23 USPQ2d 1735 (TTAB 1991); aff’d unpub’d (Fed. Cir., June 5,
1992).
The examining attorney maintains that the marks are similar in sound,
appearance, meaning and commercial impression, specifically arguing that the
dominant part of each party’s mark is the phrase “changing aging” and, therefore,
“the similarities in the elements that exist are sufficient to find a likelihood of
confusion.” E.A. br. unnumbered p. 2.
Applicant, on the other hand, maintains that “any similarities in the marks
will not cause confusion and, taken in their entirety [sic], the marks are clearly
distinguishable.” App. br. unnumbered p. 4.
In this case, we find that the marks are more similar than dissimilar. They
are both multi-word slogans that consist entirely of, or include, the words
“changing” and “aging” in the same order. Indeed, applicant’s mark incorporates
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registrant’s entire mark and, in this case, the structure of the mark suggests that it
is a variant mark identifying a variation of registrant’s services. Further, in
circumstances where an applicant’s mark encompasses the registrant’s entire mark,
likelihood of confusion has been found. See, In re Mighty Leaf Tea, 601 F.3d 1342,
94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (applicant’s mark ML is similar to
registrant’s mark ML MARK LEES); The Wella Corp, v. California Concept Corp.,
558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and
surfer design for men’s cologne, hair spray, conditioner and shampoo is likely to
cause confusion with the mark CONCEPT for cold permanent wave lotion and
neutralizer); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406, 407
(CCPA 1967) (THE LILLY as a mark for women's dresses is likely to be confused
with LILLI ANN for women's apparel including dresses); In re United States Shoe
Corp., 229 USPQ 707, 709 (TTAB 1985) (CAREER IMAGE for women's clothing
stores and women's clothing likely to cause confusion with CREST CAREER
IMAGES for uniforms including items of women's clothing). In United States Shoe,
the Board observed that “Applicant's mark would appear to prospective purchasers
to be a shortened form of registrant's mark.” 229 USPQ at 709.
We are not persuaded that the additional matter in applicant’s mark, namely
the term “CARE” at the beginning of the mark or the words “THROUGH
EDUCATION AND RESEARCH at its end, distinguishes applicant’s mark from the
cited mark. Contrary to applicant’s contention, we do not find that the word “care”
dominates applicant’s mark even though it is the first word in the mark. Rather, it
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describes not only the type of providers to whom applicant’s services are directed
but also the subject of applicant’s services and, as such, has less source-identifying
significance. Also, given the structure and syntax of applicant’s mark, we find the
words “through education and research” suggest the methodology of applicant’s
training services, and these words modify and emphasize the word “changing
aging.” It is the term CHANGING AGING that consumers are likely to perceive as
the source-indicating element of the mark.
As regards the connotations of the marks, they both convey that their
respective training or educational instruction services will alter the care given
during the aging process. The absence of the word “care” in the cited mark does not
significantly change this connotation.
In sum, although there are obvious differences in the marks, we make clear
that we have considered them in their entireties and have found that the additional
elements in applicant’s mark are not sufficient to distinguish it from the cited mark,
especially since the marks are unlikely to be viewed side-by-side and given the
general recollection of trademarks by the average person.
We acknowledge applicant’s concern regarding what it asserts as disparate
treatment by the examining attorney of the disclaimed matter in its mark and the
cited mark. We reiterate that we have analyzed the marks in their entireties,
including any disclaimed matter in each mark, keeping in mind that a disclaimer
does not remove these words from either mark. For the reasons explained above,
we find that applicant’s mark CARE: CHANGING AGING THROUGH RESEARCH
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AND EDUCATION and the cited mark CHANGING AGING convey very similar
commercial impressions.
Applicant also argues that consumers of services used in connection with
both applicant’s and registrant’s marks have a “higher sophistication” and exercise
a “higher degree” of care when purchasing the type of services offered by registrant
and applicant. Applicant particularly argues with regard to its services that the in-
home care and companionship services provided in connection with its mark are not
an impulse buy, but require research and review. We note, however, that
applicant’s services are identified as training of care providers in the field of senior
care and not the provision of such care, and we consider applicant’s argument as
pertaining to its identified services. Applicant did not submit any evidence to
support its position that consumers of both applicant’s and registrant’s identified
services are sophisticated in their purchasing decisions. Nonetheless, we believe it
reasonable to assume that consumers seeking training and education in the area of
senior care are likely to exercise some degree of care in their purchasing decisions.
However, even careful purchasers can be confused as to source, where, as here, very
similar marks are used in connection with highly related, if not overlapping,
services. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed.
Cir. 1986) citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d
1403, 168 USPQ 110, 112 (CCPA 1970) ("Human memories even of discriminating
purchasers … are not infallible.").
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Finally, we are not persuaded by applicant’s argument that its ownership of
Registration No. 4084201 for the mark CHANGING THE FACE OF AGING for
“providing companionship services for senior citizens in their place of residence,”
and the registration by the USPTO of both that mark and the cited mark,
CHANGING AGING, supports registration of its involved applied-for mark CARE:
CHANGING AGING THROUGH RESEARCH AND EDUCATION. Applicant’s
ownership of other marks that resemble its applied-for mark are not relevant to the
specific likelihood of confusion issue involved in this case, i.e., whether applicant’s
involved mark, CARE: CHANGING AGING THROUGH RESEARCH AND
EDUCATION for the identified services is likely to be confused with the cited mark,
CHANGING AGING, for the recited services. See, Hornblower & Weeks Inc. v.
Hornblower & Weeks Inc., 60 USPQ2d 1733, 1737 (TTAB 2001); Baroid Drilling
Fluids v. Sun Drilling Products, 24 USPQ2d 1048, 1052 (TTAB 1992); and In re Lar
Mor International, Inc., 221 USPQ 180, 183 (TTAB 1983). To the extent that
applicant also is arguing that we should consider its prior registration as we would
a third-party registration, a single registration does not convince us that the
common portions of the marks, namely, the words “changing aging” have a
commonly understood meaning and are therefore entitled to a narrow scope of
protection such that the remaining portion of applicant’s mark serves to distinguish
it from the cited mark. Moreover, applicant’s involved mark and services are more
similar to those in the cited registration than are the mark and services in its prior
registration.
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After carefully considering all of the arguments and evidence, even if not
specifically addressed here, we conclude that, in view of the substantial similarity
in the commercial impressions of applicant’s mark, CARE: CHANGING AGING
THROUGH RESEARCH AND EDUCATION, and registrant’s mark CHANGING
AGING, their contemporaneous use on the involved closely related services is likely
to cause confusion as to the source or sponsorship of such services. Moreover, to the
extent that any of applicant's points raises a doubt about likelihood of confusion, we
resolve such doubt, as we must, in favor of the prior registrant. 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., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed.
Cir. 1984).
Decision: The refusal to register under Section 2(d) is affirmed.