Home Care Holdings, Inc.v.Care Enterprises, Inc.

Trademark Trial and Appeal Board

Jun 30, 1997

OPP (T.T.A.B. Jun. 30, 1997)

THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB JUNE 30, 1997
Hearing: Paper No. 23
June 26, 1996 RLS/AKP
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Home Care Holdings, Inc.
v.
Care Enterprises, Inc.
_____
Opposition No. 85,876
to application Serial No. 74/73/760,377
filed on October 28, 1988
_____
Joel E. Bair of Varnum, Riddering, Schmidt & Howlett for
Home Care Holdings, Inc.
Darrell L. Olson of Knobbe, Martens, Olson & Bear for Care
Enterprises, Inc.
______
Before Simms, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Home Care Holdings, Inc. (opposer), a Michigan
corporation, has opposed the application of Care
Enterprises, Inc. (applicant), to register the mark CARE
HOME HEALTH (HOME HEALTH disclaimed), for providing health
Opposition No. 85,876
2
care services in the home.1 In the second amended
opposition opposer alleges that applicant's mark so
resembles opposer's previously used and registered mark CARE
HEALTH SERVICES for providing health care services in the
home that confusion is likely.2 Opposer has also asserted
as a ground for opposition that applicant has not rendered
services under the mark in commerce. In this regard,
opposer pleads that applicant has used its mark solely in
the state of California in connection with services provided
solely from California locations to customers in their homes
and that applicant has not rendered services under the mark
in states other than California.
In its amended answer, applicant has denied the
essential allegations of the notice of opposition but has
asserted that, contrary to the dates of use claimed in its
application, applicant has used its mark since at least as
early as February 1983. While applicant has admitted that
the descriptions of services in its application and
opposer's pleaded registration are identical, applicant has
denied that the parties' actual services are identical.
The record of this case consists of testimony (and
exhibits) taken by both parties, applicant’s notice of

1Application Serial No. 73/760,377, filed October 28, 1988,
claiming use since December 24, 1983. The application has been
filed pursuant to the provisions of Section 2(f) of the Act, 15
U.S.C. 1052(f).
2Registration No. 1,343,485, issued June 18, 1985, Sections 8
and 15 affidavit filed. The words HEALTH SERVICES have been
disclaimed in the registration.
Opposition No. 85,876
3
reliance and a stipulation concerning one of applicant's
exhibits (exhibit 152). By rule, the record also consists
of applicant's application file. The parties have filed
briefs on the case and an oral hearing has been held.
Opposer’s Record
Opposer, whose main offices are in Palm Beach, Florida,
owns and operates home health care agencies and provides
services in the states of Michigan, Massachusetts,
Connecticut, Maryland, Virginia, Florida and California, as
well as the District of Columbia. Opposer has approximately
1,800 employees of which 1,600 provide patient care.
According to opposer's testimony, 40 to 45 percent of
opposer's home health care business comes from referrals
from physicians (cardiologists, oncologists and orthopedic
surgeons) while 30 to 35 percent comes from direct patient
inquiries. Opposer advertises by way of print media and
direct mail.
Opposer's mark CARE HEALTH SERVICES for its home health
care services has been used continuously since 1983. As
noted above, opposer obtained a federal registration of this
mark in 1985. Opposer has known about applicant and
applicant's mark since 1983 or 1984.
With respect to the issue of likelihood of confusion in
this case, opposer's chairman, president and chief executive
officer, Mr. William Mara, testified, at 30-32:
Opposition No. 85,876
4
Q. What leads you to believe that there
would be such a high likelihood of
confusion?
A. Number one, the marks are
essentially identical. Number two, we
provide the same services, and we market
to exactly the same referral sources.
Number three, our patients are elderly.
Many of them are--virtually all of them
have health problems to varying degrees.
Many of them are alone, don't have
people or advisors who can assist them
in differentiating between a variety of
providers.
Q. Well, let's stop right there. You
told us that some of these, or a good
percentage of these, come about by
referrals by doctors.
A. Uh-huh.
Q. Orthopedic surgeons, cardiologists
and oncologists.
A. Uh-huh.
Q. Those individuals, it would seem to
me, are familiar with health care
providers in the industry.
A. Not necessarily. Physicians have
varying degrees of awareness about home
care providers, unless they've had
direct experience, either favorable or
unfavorable. It's estimated -- the
industry estimates that less than 25
percent of physicians, nationally, are
fully -- fully cognizant and utilizers
of home health care services. This is a
young industry. And physicians
awareness is a key and crucial issue.
Another problem is the problem of
differentiation for many physicians who
are aware of home health care services,
and take a look in the marketplace that
might have dozens of providers, and they
have great difficulty differentiating --
if they haven't had personal experience,
Opposition No. 85,876
5
they have great difficulty in
differentiating between providers.
Obviously, for a group of physicians
who, you know, don't have personal
experience, direct personal experience
with providers, you take a look in the
Yellow Pages, and there are 50 providers
in the marketplace. How can you
differentiate between those providers,
particularly if there's a great deal of
confusion about who they are, because of
similarities in names or whatnot.
Later, Mr. Mara testified, at 100:
Q. Would the doctor be more likely to
distinguish or differentiate between
health care services provided by Care
Health Services as opposed to Care Home
Health; do you think?
A. I -- I think it's a very real
possibility that a physician could get
confused between the two?
Q. And why do you say that?
A. Because of the similarity of their
names. Even in our own proceedings
today, you have been tripped up on the
name, you have been tripped up on the
name, I believe. I think I'm probably
the only person who doesn't get tripped
up on the name.
According to opposer's testimony, in 1985 or 1986,
opposer purchased La Jolla Nurses Registry, a home health
care provider, in the San Diego area. Operating under the
name La Jolla Nurses Home Care, this company is now a
subsidiary of Care Health Services, Inc. Ms. Brittnei
Salerno, the administrator of La Jolla, testified that she
is knowledgeable of applicant's operation in San Diego.
Opposition No. 85,876
6
With respect to an instance of actual confusion, she
testified, at 21, as follows:
A. In fact, I just heard it again very
recently. I was interviewing for a
staffing coordinator position in our
office. We had put an ad in the paper
for it. And the respondents, one of the
interviewees that came in, as soon as
she sat down, that's what she wanted to
know; if we were the same company
because she had worked for Care Home
Health prior.
Ms. Salerno went on to indicate that the service mark CARE
HEALTH SERVICES has been minimized in the San Diego area
because of the confusion with applicant's mark CARE HOME
HEALTH. Instead, opposer's subsidiary in the San Diego area
has used the name "La Jolla Nurses" or "La Jolla Nurses Home
Care." Salerno, dep., 22.
Opposer, through its officers, is aware of third-party
home health care providers operating under such names and
marks as RES-CARE, ALL CARES and SPECIAL CARE.
Applicant's Record
According to applicant's testimony, applicant has
developed a large chain of skilled nursing facilities, a
pharmaceutical operation in California (operating under the
name Health Care Network) and offers skilled nursing home
health care services under the mark CARE HOME HEALTH.
Applicant also provides custodial care services under the
mark Care-at-Home. Applicant's CARE HOME HEALTH services
Opposition No. 85,876
7
are provided within the state of California, and applicant
provides those services in the state of Ohio under the mark
Americare Home Care but also uses the mark CARE HOME HEALTH
in the manner more fully explained below.
Applicant first used its mark CARE HOME HEALTH in
February 1983 in connection with skilled home health care
services. As of 1992, applicant's revenues from its CARE
HOME HEALTH services exceeded $14 million. According to the
record, most of applicant's clients are geriatric patients
covered under the Medicare program. Applicant's witnesses
are aware of no instances of actual confusion involving the
respective marks of the parties.
Applicant called several witnesses in an attempt to
demonstrate the common use of the term "CARE" with respect
to home health care services. For example, a former
employee, Ms. Sandra Joy Myers, testified to her awareness
of the use of the mark PERSONAL CARE HEALTH SERVICES, both
within and outside of the state of California, in connection
with home health care services. Ms. Myers also testified to
her awareness of third-party use of the mark OMNI + CARE in
connection with health care services.
An advertising brochure (exhibit 153) was made of
record during applicant's testimony period. It is noted
that on the front of this brochure applicant is identified
as "Care Home Health Services, Inc." below which are
identified, in smaller print, applicant's operations Care
Opposition No. 85,876
8
Home Health and Care-at-Home. On the back of that brochure
is printed "Rely on Care Home Health Services ..."
Finally, Ms. Paula Herr, corporate vice president of
Care Home Health, testified with respect to applicant's
subsidiary and the use of the mark CARE HOME HEALTH in Ohio.
Among other things, Ms. Herr testified that this mark along
with the mark AMERICARE appear on signs and awnings of that
subsidiary's health care facilities in Ohio. Also, patient
forms bearing the designation CARE HOME HEALTH are also used
by applicant's subsidiary and have been used since 1986.
Herr dep., 33. Further, at trade shows, applicant promotes
the services of its Ohio subsidiary under both marks
AMERICARE and CARE HOME HEALTH. These trade shows have
occurred in the states of Tennessee and Florida.3
Arguments of the Parties
Opposer argues that most of the so-called du Pont (In
re E.I. du Pont de Nemours & Co., 177 USPQ 563 (CCPA 1973))
factors favor opposer. Opposer argues that the marks are
similar, each being dominated by the term "CARE" with the
remaining parts of the respective marks being descriptive
and disclaimed. Opposer points out that both marks contain
the word "HEALTH" and argues that the marks are very similar
in sound and appearance as well as being virtually identical

3It is noted that Ms. Herr testified that applicant, Care
Enterprises, Inc., is now by merger and change of name Regency
Health Services, Inc. Should applicant ultimately prevail in
this proceeding, applicant should ensure that appropriate
documents evidencing this merger and change of name are recorded
in this Office with respect to this application.
Opposition No. 85,876
9
in connotation and overall commercial impression, with any
differences insufficient to distinguish the marks. Further,
opposer points out that the respective services are
identical and that, in fact, both parties belong to the same
trade associations and are listed in some of the same
provider directories. With respect to the sophistication of
the purchasers, it is the opposer's position that, when
choosing home care, patients or their family members are
"often acting under a certain degree of emotional stress as
well as the physical debilitations caused by advanced age
and disease." Opposer's brief, 10. With respect to
physicians, who might be considered more sophisticated with
respect to the health care field than the ordinary consumer,
opposer argues that they, too, have trouble distinguishing
between various home health care providers. Opposer also
maintains that its mark is a strong one entitled to a broad
scope of protection within its field and that third-party
marks for which there is some evidence of use convey
different commercial impressions (FULL CARE HEALTH SERVICES
and PERSONAL CARE HEALTH SERVICES). With respect to the
limited evidence of actual confusion, opposer argues that
the geographic overlap of the respective marks has been
limited and that opposer's efforts in the San Diego area to
minimize the use of the mark CARE HEALTH SERVICES and to
emphasize the mark La Jolla Nurses Home Care has reduced the
level of confusion that would have otherwise existed.
Opposition No. 85,876
10
With respect to the secondary issue in this case--that
applicant has not used its mark in commerce--opposer
maintains that applicant's mark CARE HOME HEALTH is used as
a service mark only in connection with services rendered
within the state of California and, outside of California,
at most, as a trade name to identify the California company
that renders services in Ohio under the mark AMERICARE.
This use, according to opposer, is not use sufficient for
purposes of federal registration.
Applicant, on the other hand, argues that confusion is
unlikely. Applicant maintains that opposer's mark CARE
HEALTH SERVICES is "extremely weak" and should be afforded a
very narrow scope of protection. In this regard, applicant
points to the 217 federal registrations for third-party
marks incorporating the words "CARE" or both the words
"CARE" and "HEALTH." According to applicant, these highly
suggestive words are commonly used in trademarks or service
marks in the health care industry. Applicant argues that
the marks are sufficiently dissimilar in overall appearance
to avoid likelihood of confusion. With respect to the
services, applicant argues that these are relatively
expensive services which are not purchased on impulse. For
these services, there is a referring physician in all cases,
even where an inquiry comes from a patient. Applicant
maintains that physicians and health care institutions are
highly sophisticated in their knowledge of these services
and are, therefore, unlikely to be confused. With respect
Opposition No. 85,876
11
to the alleged instance of actual confusion noted above,
applicant contends that an inquiry from a job applicant
concerning opposer's affiliation does not constitute
consumer confusion. Finally, applicant argues that the
parties have coexisted for twelve years with no confusion by
physicians, referring institutions or potential clients, and
that opposer's inaction in protesting applicant's use for
seven years after learning of applicant's mark "is highly
probative of no likelihood of confusion." Applicant's
brief, 25.
Concerning the issue of use in commerce, applicant
maintains that, aside from its use of the mark in more than
one state, a service mark may be federally registered even
if an applicant has only a business establishment in a
single state. Applicant argues that its health care
services rendered in the state of California are federally
regulated under the Medicare program, that applicant
recruits employees for its services on a nationwide basis,
that its services are listed in a nationally distributed
directory of home nursing services, and that applicant's
payment sources are located throughout the United States.
Moreover, applicant points to its use of the mark CARE HOME
HEALTH on building signs and patient forms in the state of
Ohio (as well as in the state of California).
Opinion
Opposition No. 85,876
12
Disposing first of the secondary issue of use in
commerce, we agree with applicant that this record is
sufficient to demonstrate that applicant has satisfied the
use in commerce requirements of the Lanham Act. Aside from
applicant's use of this mark in more than one state, this
record fully supports registration based upon applicant's
activities solely within the state of California. Under
Section 45 of the Act, 15 USC § 1127, "use in commerce" is
the bona fide use of the mark in the ordinary course of
trade. This definitional section also indicates that a mark
is deemed to be in use in commerce on services when it is
used or displayed in the sale or advertising of services and
the services are rendered in commerce. "Commerce" is
defined as "all commerce which may lawfully be regulated by
Congress." In this regard, it is not necessary that such
services be rendered in more than one state to satisfy the
use in commerce requirement. Larry Harmon Pictures
Corporation vs. The Williams Restaurant Corporation, 18
USPQ2d 1292, 1295 (Fed. Cir. 1991), cert. denied, 502 U.S.
823 (1991)). As applicant has noted, its services are
certified by the federal Medicare program and governed by
federal regulations. Applicant's payment sources include
insurance companies located in many states. Applicant's
revenue from services rendered under its mark exceeded $15
million in 1992, and applicant has advertised or otherwise
promoted or listed its services beyond the state of
California. Finally, even if this use were considered
Opposition No. 85,876
13
insufficient use in commerce to satisfy the requirements for
registration (and we do not believe it is), applicant’s
mark, as noted above, has also appeared prominently on forms
as well as marketing brochures distributed in Ohio. There
is no question but that applicant's services have had an
effect on commerce which may be regulated by Congress.
Turning to the central issue of likelihood of
confusion, we note that priority is not an issue. Hewlett-
Packard Company v. Human Performance Measurement, Inc., 23
USPQ2d 1390, 1394 (TTAB 1992).
After careful consideration of this record and the
arguments of the parties, we agree with opposer that these
marks, applied to essentially identical services, are so
similar that confusion is likely. Comparing the marks in
their entireties, they differ only in their descriptive
components. We agree with opposer that, as used, the marks
CARE HEALTH SERVICES and CARE HOME HEALTH have very similar
overall commercial impressions. The fact that both marks
begin with the word "CARE" and contain the common word
"HEALTH" is significant. Although the purchase of home
health care services is not normally an impulsive decision,
we believe that even relatively sophisticated professionals
and referring institutions are likely to be confused because
of the similarities of the marks CARE HEALTH SERVICES and
CARE HOME HEALTH.
While we have based our decision on the issue of
likelihood of confusion by comparing the registered mark and
Opposition No. 85,876
14
applicant's applied-for mark, we note that in some of
applicant's promotional literature it uses the name or mark
"Care Home Health Services." This use tends to make it more
similar to opposer’s registered mark CARE HEALTH SERVICES.
While we have considered the evidence of third-party
use of allegedly similar marks as well as the numerous
third-party registrations of record, we are persuaded by
this record that persons familiar with opposer's CARE HEALTH
SERVICES home care services who then encounter applicant's
CARE HOME HEALTH home care services are likely to believe,
even if they notice the minor differences in the marks, that
these services emanate from or are otherwise sponsored or
rendered by the same entity.
Decision: The opposition is sustained on the ground of
likelihood of confusion; the opposition is dismissed with
respect to the issue of use in commerce; registration to
applicant is refused.
R. L. Simms
Opposition No. 85,876
15
T. J. Quinn
C. L. Walters
Administrative Trademark
Judges, Trademark Trial
and Appeal Board