Eastgate Health Care Center, Inc.

Trademark Trial and Appeal Board

Apr 23, 2001

No. 75584372 (T.T.A.B. Apr. 23, 2001)

4/23/01 Paper No. 12
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Eastgate Health Care Center, Inc.
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Serial No. 75/584,372
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Robert H. Earp, III of Benesch, Friedlander, Coplan & Aronoff for
Eastgate Health Care Center, Inc.
Rebecca A. Smith, Trademark Examining Attorney, Law Office 110
(Chris A. F. Pedersen, Managing Attorney).
_______
Before Hohein, Hairston and Drost, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Eastgate Health Care Center, Inc. has filed an
application to register the mark "DAYSPRING" for "providing
health care management services; namely, a professional nursing
facility."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its services, so resembles the
following marks, which are owned by the same registrant, as to be
1 Ser. No. 75/584,372, filed on November 6, 1998, which alleges dates
of first use of November 1997.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 75/584,372
2
likely to cause confusion, mistake or deception: (1) the mark
"DAYSPRING," which is registered for the "rehabilitation of
former adolescent drug addicts";2 and (2) the mark "DAYSPRING"
and design, as reproduced below,
which is registered for "adult and adolescent alcohol and
chemical dependency rehabilitation services."3
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), "in any likelihood of confusion
analysis[,] two key considerations are the similarity of the
2 Reg. No. 1,369,577, issued on November 5, 1985, which sets forth
dates of first use of December 1, 1984; combined affidavit §§8 and 15.
3 Reg. No. 1,461,427, issued on October 13, 1987, which sets forth
dates of first use of December 1, 1984; combined affidavit §§8 and 15.
Ser. No. 75/584,372
3
goods [or services] and the similarity of the marks."4 Here,
inasmuch as the respective marks consist of or include the
arbitrary term "DAYSPRING," which in the case of registrant's
"DAYSPRING" and design mark is also the portion thereof which
would be utilized when asking for or about the associated
services, the respective marks are identical, or substantially
so, in sound, appearance and connotation for all practical
purposes.5 Since such marks consequently engender essentially
the same commercial impression, the focus of our inquiry is on
whether applicant's services are so related to registrant's
services that, when those services are offered under the marks at
issue, confusion as to the source or sponsorship of the services
is likely to occur. We note in this regard that, as a general
proposition, where the respective marks are identical and/or
essentially the same, as is the case herein, there need be only a
viable relationship between the applicant's services and the
registrant's services in order to support a holding of likelihood
of confusion. See, e.g., In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687 (Fed. Cir. 1983) and In re Concordia International
Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).
Applicant argues, among other things, that there is no
likelihood of confusion in this case because the respective marks
4 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [or services] and differences
in the marks."
5 Applicant, in its brief, not only does not contend otherwise, but in
fact "concedes that its mark and the two cited registered marks are
similar in appearance and sound."
Ser. No. 75/584,372
4
"are not associated with closely related services that
customarily move through the same channels of trade to the same
general purchasers." Specifically, applicant insists, with
respect to the excerpts made of record by the Examining Attorney
from her search of the "NEXIS" database, that "the only
similarity between Applicant's and Registrant's services is the
fact that some large hospitals supply both nursing home
facilities and drug and alcohol rehabilitation services under
their own name." According to applicant, "[t]he distinct
clienteles for whom the services are provided, the distinct
services performed, the proximately [sic] of where such services
are performed, the fact that Applicant and Registrant do not
provide similar services, and the fact that both Applicant's and
Registrant's services would likely be excluded from large
hospitals providing both services strongly suggests that these
services are not closely related and therefore [contemporaneous
use of the respective marks] would not cause confusion to
consumers."
In particular, applicant contends that:6
6 Applicant additionally asserts that "the laws of the State of Ohio,
where Applicant's principal place of business is located, specifically
distinguish nursing homes or residential care facilities from alcohol
and drug addiction programs" by "defining nursing homes or residential
care facilities to exclude alcohol or drug addiction programs."
Applicant also notes that it "assumes other states specifically
distinguish between operating nursing homes and operating alcohol and
drug addiction programs, therefore further mandating a distinction
between the services." Although applicant concludes that "these
distinctions under state law tend to obviate any confusion as to the
source of these respective services by, in effect, separating these
classes of purchasers," we agree with the Examining Attorney that it
does not appear that Ohio law "precludes any company or entity from
providing both services in different locations, even side by side."
More importantly, as the Examining Attorney further points out,
Ser. No. 75/584,372
5
The nature of the respective services
are nearly opposite with regard to their
goals. Drug and alcohol rehabilitation
centers attempt to identify and treat drug
addicts, either through short term admittance
to a facility or through outpatient
counseling sessions. Treated persons
eventually discontinue the program after a
set amount of time, successful treatment, or
voluntarily leaving the program to hopefully
lead a life free from addiction. Nursing
care facilities generally have no such short
term or rehabilitational goals. Nursing care
facilities provide care or living assistance
for permanent residents, usually the elderly,
who live within the facility. Generally,
nursing homes provide their residents with
assisted living until the resident's death.
The fact that some large, independent
hospitals own and operate both nursing home
facilities and drug and alcohol treatment
facilities does not reveal an intimate
relationship between these respective
services nor that the respective services are
closely related. ....
Large hospitals must cater to a large
population of people having varied physical
and emotional problems. The healthcare ...
services provided by these large hospitals
can be enormously varied and not closely
related to each other. .... All of these
services can differ dramatically in their
targeted markets, their effects on their
targeted markets, the needs the particular
services meet, and the means used to meet
those needs. Therefore, ... nursing home and
alcohol and drug treatment services, which
make up at most small components [of what the
Examining Attorney refers to as] "health care
services," cannot be deemed "per se" closely
related based on the fact that these
respective services are offered by some large
hospitals.
Applicant also maintains that "the services in issue
are not related or marketed in such a way that they would be
"applicant is applying for a registration that is national in scope"
and thus, for registration purposes, "it is irrelevant that Ohio law
Ser. No. 75/584,372
6
encountered by the same persons in situations that would create
the incorrect assumption that they originate from the same
source." According to applicant:
Purchasers seeking nursing home services will
not encounter, nor wish to encounter, drug
and alcohol rehabilitation services. And
because these respective services are not
complementary (each service satisfies a
specific, non-shared need), they target
dramatically different consumer groups.
Therefore, because Applicant and registrant
doe not offer similar services to similar
groups of people, there is no opportunity for
Applicant's mark to cause confusion with
Registrant's mark[s].
....
Thus, [and] because Registrant does not
provide nursing care services and Applicant
does not provide drug and alcohol treatment
services, it does not appear that these marks
and their corresponding services will diverge
from their established, likely-to-continue
trade channels, regardless of the fact the
larger hospitals can offer such services
under their own name. There is no
opportunity nor need for Applicant or
Registrant to cross-promote their services to
the other's consumer group. Therefore,
without any similar established, likely to
continue channels of trade, consumers of
these services are not likely to encounter
the mark of the other.
In addition, applicant asserts that the conditions
under which the respective services are purchased are
"dramatically different" and that "the purchasers of those
services, though typically not the same, would be ultra-
discriminating," so that there would be either no likelihood of
confusion or no more than "a de minimis likelihood of confusion."
Specifically, because applicant's professional nursing facility
may distinguish between the nature of these two services."
Ser. No. 75/584,372
7
services generally are expensive by their very nature, applicant
urges that purchasers of such services must be considered to be
highly discriminating and thus are "presumed to not buy causally,
but only after careful consideration." In view thereof, and
because "a decision made by a concerned relative to admit an
elderly relative to a professional nursing care facility is an
important and ... expensive proposition," applicant insists that
"that decision maker would be sophisticated enough," in the rare
instance where such person would also have occasion to encounter
registrant's drug and alcohol rehabilitation services, "to be
ultra-discriminating, especially when the everyday care of a
loved one is involved." Furthermore, applicant contends that, to
the extent there is any potential for confusion, such is clearly
de minimis due to the fact that, "because nursing care facility
services are distinct from drug and alcohol rehabilitation
services, they traditionally cater to diametrically opposed
groups of people who require distinct services which are not
complimentary [sic]."
We are constrained to agree, however, with the
Examining Attorney that confusion as to origin or affiliation is
likely to take place. As she correctly points out, it is well
settled that goods or services need not be identical or even
competitive in nature in order to support a finding of likelihood
of confusion. Instead, it is sufficient that the goods or
services are related in some manner and/or that the circumstances
surrounding their marketing are such that they would be likely to
be encountered by the same persons under situations that would
Ser. No. 75/584,372
8
give rise, because of the marks employed in connection therewith,
to the mistaken belief that they originate from or are in some
way associated with the same entity or provider. See, e.g.,
Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590, 595-96 (TTAB
1978) and In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978).
While we concur with applicant that the mere rubric in
the Examining Attorney's brief that "[t]he respective services
are both health care services and fall within the health care
field" is insufficient, given the wide diversity therein, to show
that the services at issue herein are indeed closely related, the
Examining Attorney has made of record a number of excerpts from
her search of the "NEXIS" database to demonstrate that "companies
that provide nursing care services also provide alcohol or drug
rehabilitation services and that, as a result, the services are
related."7 Specifically, and contrary to applicant's contention
on appeal that such excerpts are limited solely to those which
involve "large hospitals,"8 the following articles "demonstrate
that it is not uncommon for companies to provide both [nursing
7 Although the Examining Attorney, in support of her position, also
points out that "applicant has even admitted in ... response to the
first Office Action ... that the applicant 'does provide some
ancillary alcohol and drug rehabilitation services,'" we note that in
its request for reconsideration, applicant retracted such admission.
In particular, applicant indicates that while its counsel "mistakenly
suggested" that applicant's facility offered ancillary alcohol and
drug rehabilitation services, applicant categorically states that its
"nursing care facility provides no alcohol and drug rehabilitation
services, nor is it licensed to do so ...."
8 Applicant's position, we note, appears at odds with the admission in
its response to the first Office Action, in which it conceded (italics
added) that: "The Examining Attorney's research indicates that many
Ser. No. 75/584,372
9
care facilities and alcohol and other rehabilitation services]
and therefore [that] consumers are likely to believe that the
services come from the same source" (emphasis added):
"Stephen Rankin has been named director
of Life Care Center of Elyria, a 90-bed
nursing center that will open March 14. It
will specialize in Alzheimer's services,
subacute care, skilled nursing care and
rehabilitation services." -- Plain Dealer,
February 24, 1999;
"Memorial, the city's only hospital,
would retain emergency room services and
expand nursing home, psychiatric and mental
health and drug and alcohol rehabilitation
services." -- Buffalo News, January 14, 1998;
"Tustin Hospital Medical Center is
reopening its doors after having been closed
for over a year. Only this time, instead of
catering to a 'well-heeled' clientele, the
hospital will focus on managed care patients
and will include a nursing home, acute care
facility, and a drug and alcohol
rehabilitation center." -- Orange County
Business Journal, July 28, 1997;
"St. Peter's expansion and renovation
plan ... includes the previously announced
construction of a four-story addition to the
front of the hospital ... and a 160-bed
nursing home and day care center to be
constructed in Guilderland.
....
The four-year expansion program will
begin with ground-breaking ... for the $13.6
million nursing home, which will be located
next to St. Peter's Alcohol Rehabilitation
Center." -- Capital District Business Review,
June 8, 1992;
"In 1971, he helped establish alcohol
rehabilitation programs at several centers,
including Manor Care nursing home in Silver
Spring ...." -- Washington Times, February
22, 1991; and
hospitals or companies that operate nursing care facilities also
provide alcohol or drug rehabilitation centers."
Ser. No. 75/584,372
10
"Manor Healthcare Corp., one of the
nation's leading owners and operators of
nursing homes, is entering the Sacramento
market with two large projects ....
....
Aside from its nursing homes, the
company has several other health-related
businesses, including an alcohol
rehabilitation hospital. However, the
company's prime focus is the elderly care
market." -- Business Journal-Sacramento,
April 27, 1987.
As the Examining Attorney observes in her brief, not
only is it the case that "applicant has provided no evidence that
the companies mentioned in the articles are large hospitals," but
it is clear that "even a small company or hospital may provide
several types of medical care that could include nursing care
facilities and [alcohol and/or drug] rehabilitation services."
Most importantly, the "NEXIS" excerpts readily demonstrate that
the same entities, including health care businesses other than
just hospitals, routinely offer both nursing care facilities and
alcohol and/or drug rehabilitation centers. In consequence
thereof, it is likely that consumers would regard applicant's
professional nursing facility services and registrant's adult and
adolescent drug and alcohol rehabilitation services to be closely
related as to their source or sponsorship, particularly when, as
here, the respective services are provided under marks consisting
of or dominated by the arbitrary term "DAYSPRING."
Moreover, as the Examining Attorney convincingly argues
in her brief, it is simply not the case that consumers of
applicant's and registrant's services are mutually exclusive nor
is a likelihood of confusion avoided by the fact that the
Ser. No. 75/584,372
11
services at issue would tend to be selected with care and
deliberation. Plainly, nursing care facilities are not limited
exclusively to the long term care of the elderly, as urged by
applicant, but are also directed, for example, to the care and
rehabilitation of accident victims and joint replacement patients
whose recovery periods require more time for recovery than health
insurance will allow for their hospitalization. Similarly, it is
often not uncommon for alcoholics and those suffering other forms
of drug and/or substance abuse or dependency to be sufficiently
incapacitated, at least at the beginning of their rehabilitation
programs, as to require professional nursing care.
Thus, we concur with the Examining Attorney that, while
the respective services are specifically different and their
selection is subject to discrimination and care rather than based
upon impulse, it is still the case that "the consumers for each
service could very well be the same since the need for specific
medical care is not relegated to one particular section of the
population" and that "many consumers of both types of services
are persons other than the patient[s] themselves." Furthermore,
as the Examining Attorney persuasively notes in this regard:
Patients needing rehabilitation for [alcohol
or] substance abuse are often brought to
treatment by family members and friends.
Similarly, patients needing nursing care
facilities often have these decisions made
for them by family members and friends. As a
result, the consumers may be the exact same
people. A consumer who has been tasked with
finding nursing home facilities for one
family member may [have to] seek treatment
for another family member or friend for
alcohol [or drug] rehabilitation services.
Confronted with both [applicant's and
Ser. No. 75/584,372
12
registrant's essentially identical] marks,
the consumer is very likely to be confused
that the services come from the same source.
Finally, to the extent that we may nevertheless harbor
any doubt as to the conclusion that applicant's nursing care
facilities are so closely related to registrant's adolescent and
adult alcohol and drug rehabilitation services that the provision
thereof under marks which consist of or prominently feature the
arbitrary term "DAYSPRING" would be likely to cause confusion as
to the origin or affiliation of the respective services, we
resolve such doubt, as we must, in favor of the registrant. See,
e.g., In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d
1025, 1026 (Fed. Cir. 1988) and In re Pneumatiques, Caoutchouc
Manufacture et Plastiques Kleber-Colombes, 487 F.2d 918, 179 USPQ
729 (CCPA 1973).
Decision: The refusal under Section 2(d) is affirmed.