Rodale, Inc.v.Healthy Heart Review

Trademark Trial and Appeal Board

Feb 23, 2004

No. 91151406 (T.T.A.B. Feb. 23, 2004)

Mailed: February 23, 2004
Hearing: Paper No. 26
November 19, 2003 BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Rodale, Inc.
v.
Healthy Heart Review, Inc.
_____
Opposition Nos. 91151405 and 91151406
_____
Gary D. Krugman and Jody H. Drake of Sughrue Mion PLLC for
Rodale, Inc.
Katherine Hendricks of Hendricks & Lewis for Healthy Heart
Review, Inc.
______
Before Hairston, Chapman, and Holtzman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Rodale, Inc. (a Pennsylvania corporation) has opposed
two applications filed on February 5, 2001, by Healthy Heart
Review, Inc. (a Washington corporation), both to register
the mark PREVENTION MD (“MD” disclaimed) on the Principal
Register. Both applications are based on applicant’s
claimed dates of first use and first use in commerce of July
2000 and October 2000.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Opposition Nos. 91151405 & 9115406
2
Application Serial No. 76205561 (the subject of
Opposition No. 91151405) is for services identified as
“medical testing and diagnostic services, and vaccinations”
in International Class 42.
Application Serial No. 76205560 (the subject of
Opposition No. 91151406) is for services identified as
“educational services, namely, instruction in first aid,
automated external defibrillation, cardiopulmonary
resuscitation, wellness, travel medicine, and other life
support and first aid training” in International Class 41.
As grounds for opposition, opposer made essentially the
same allegations in its two notices of opposition, namely,
that since long prior to any date upon which applicant can
rely, opposer adopted and registered various marks which
consist of or include the word PREVENTION for “various
products and services in the health, nutrition, diet, and
exercise field, and related collateral products and
services” (Paragraph 2); that opposer owns numerous
registrations with the term PREVENTION (over 20 are listed
in opposer’s paragraph 3); that opposer “has long used the
mark PREVENTION in connection with providing healthcare
information and health screening and testing services”
resulting in the mark becoming “distinctive in association
with such services and [identifying] opposer as the source
of such services rendered under the PREVENTION mark”
Opposition Nos. 91151405 & 9115406
3
(Paragraph 4); that as a result of opposer’s long use of its
family of PREVENTION marks and its extensive advertising and
promotion of its various products and services its
PREVENTION marks have become “extremely well known to the
public and have become famous” (Paragraph 5); and
applicant’s mark, when used in connection with its services,
so resembles opposer’s previously used and registered marks,
consisting of or including the word PREVENTION, as to be
likely to cause confusion, mistake, or deception in
contravention of Section 2(d) of the Trademark Act.1
In applicant’s answers it denied the salient
allegations of the notices of opposition, and raised
“affirmative defenses” which are more in the nature of
further specific information as to the basis for applicant’s
denial of opposer’s likelihood of confusion claim.
In an August 19, 2002 order, the Board granted
opposer’s motion to consolidate, and the two opposition
proceedings were then consolidated.
The record consists of the pleadings (in both
oppositions); the files of the two opposed applications;
1 Opposer also pleaded in both oppositions claims under Section
2(a) false suggestion of a connection with opposer, and Section
43(c) dilution, 15 U.S.C. §§1052(a) and 1125(c), respectively.
These claims were expressly dropped by opposer in footnote 2 of
its motion (filed April 11, 2003) to amend the pleadings.
Therefore, these two claims will not be further considered. (A
decision on opposer’s motion to amend its pleadings was deferred
until after trial by Board order dated August 9, 2003. The
motion to amend will be decided later herein.)
Opposition Nos. 91151405 & 9115406
4
opposer’s notices of reliance on (i) status and title copies
of twenty of its registrations,2 and (ii) applicant’s
answers to certain of opposer’s interrogatories, and other
discovery materials; and the testimony depositions, with
exhibits, of Catherine M. Cassidy, editor-in-chief of
opposer’s PREVENTION magazine,3 and Jeff E. Vaughan,
opposer’s executive director of corporate communications.
Applicant submitted a notice of reliance on (i) several
third-party registrations which include the word
“PREVENTION” and several others which include the component
“MD,” and (ii) opposer’s answers to two of applicant’s
interrogatories; and the testimony depositions, with
exhibits, of Rodney L. Watson, applicant’s president, and
Gary W. Bequette, in charge of applicant’s sales and
marketing as well as department head for CPR and first aid
training.
Both parties filed briefs on the consolidated case4,
and both parties were represented at the oral hearing held
before the Board on November 19, 2003.
2 Nineteen of these twenty registrations were pleaded in
opposer’s notices of opposition, and opposer requested that the
pleadings be considered amended to allow for the latest
registration. To whatever extent it is necessary, the Board
considers opposer’s pleadings amended to conform to the evidence
pursuant to Fed. R. Civ. P. 15(b), thereby including the
twentieth registration as if pleaded by opposer.
3 Portions of this testimony were submitted as “confidential.”
4 Opposer’s motion (filed September 8, 2003) to extend its time
to file a reply brief is granted.
Opposition Nos. 91151405 & 9115406
5
Opposer’s Motion to Amend the Pleadings
As a preliminary matter, we will determine opposer’s
motion for leave to file a consolidated amended notice of
opposition. Applicant’s testimony period closed on April 9,
2003, and on April 11, 2003 opposer moved under Fed. R. Civ.
P. 15(b) for leave to file an amended consolidated notice of
opposition to add a claim that each application is void ab
initio because applicant did not use the mark in commerce in
connection with any (application Serial No. 76205560) or
some (application Serial No. 76205561) of the identified
services prior to the filing date of the applications.
Specifically, opposer contends that this new issue was
raised by applicant and was tried by implied consent during
the March 19, 2003 deposition of applicant’s president,
Rodney L. Watson; that applicant’s attorney raised the issue
of whether applicant renders any of its services in
interstate commerce (or other commerce lawfully regulated by
Congress); that the only service rendered by applicant
outside the state of Washington is that identified as
“vaccinations”; that opposer timely filed the motion for
leave to amend because it had no basis to file a motion
prior to the issue being raised during applicant’s testimony
period; and that the amendment will not delay the proceeding
or prejudice applicant.
Opposition Nos. 91151405 & 9115406
6
Applicant contends that consent is generally implied
only if, during trial, a party acquiesces to the
introduction of evidence that is relevant only to that
issue, however, in this consolidated case, the testimony is
relevant to the pleaded issue of likelihood of confusion
(e.g., actual confusion circumstances); that the issue was
not tried with the implied consent of applicant; that
applicant will be unfairly and substantially prejudiced as
opposer did not act on this issue until after the close of
applicant’s testimony period, thereby negating applicant’s
opportunity to offer further evidence on interstate use; and
that the amendment would be futile because the use necessary
to support application and registration includes not only
providing services in more than one state, but also,
services provided in one state to customers who travel
across state lines.
While the witness, Rodney Watson, was questioned on
direct and cross examination regarding applicant’s
activities outside the state of Washington, there is nothing
in the record which would have alerted applicant that
opposer intended to use the information as a separate ground
for opposition, specifically that both applications were
void ab initio. See Colony Foods, Inc. v. Sagemark, Ltd.,
735 F.2d 1336, 222 USPQ 185, 187 (CCPA 1984); and Reflange
Inc. v. R-Con International, 17 USPQ2d 1125 (TTAB 1990). It
Opposition Nos. 91151405 & 9115406
7
is reasonable, as applicant argues, that it believed this
testimony related to the issue of likelihood of confusion.
We find that the issue of applicant’s alleged failure
to use its mark in connection with its services in
interstate commerce rendering its applications void ab
initio was not tried with the implied consent of applicant;
and that to allow such an amendment of the pleading in this
consolidated case at this time would constitute unfair
surprise and be prejudicial to applicant.
Accordingly, opposer’s motion for leave to file an
amended pleading under Fed. R. Civ. P. 15(b) to add a claim
of applicant’s asserted non-use of the mark in interstate
commerce is denied.
The Parties
Rodale, Inc., opposer, publishes various publications,
including magazines such as Prevention, Bicycling, Runner’s
World and Organic Style. Its monthly Prevention magazine
was first published in 1950 and the mark has been in
continuous use since that date. This magazine includes
articles covering a wide variety of health topics, such as
weight loss, fitness, nutrition and diet, exercise,
information on chronic diseases including cancer, heart
disease, diabetes, arthritis and asthma, mental health
topics, self-diagnosis based on symptoms, health news and
medical breakthroughs including new vaccines and new
Opposition Nos. 91151405 & 9115406
8
therapies. Opposer’s Prevention magazine has a paid
circulation (subscription and newsstand) of 3.2 million,
with a “pass along” readership of 10 million. It is the
14th largest consumer magazine in the United States, ahead
of Playboy and Sports Illustrated, and the number one
magazine in the consumer health publication rankings.
Other publications in opposer’s Prevention line and all
offered under a PREVENTION mark are the following: special
guides on various health topics, which are newsstand only
publications, and are sold under the name Prevention Guide;
books (totaling about 50-100 different titles) including
health cookbooks, books for seniors, for kids and for women,
sold through direct mail and bookstores and other retail and
online outlets; “bookazines” which are books made available
like a magazine; various newsletters (e.g., “Prevention
Walking Club Newsletter”), (which are currently available
online); compilations of free Prevention reports covering a
variety of health topics such as back pain, high blood
pressure and arthritis, offered as incentives for
subscription via direct mail; and Prevention Annual which is
a compilation of various health topics published over the
course of a year. Opposer’s various PREVENTION publications
are available nationally and are sold or distributed to the
general public.
Opposition Nos. 91151405 & 9115406
9
Opposer also offered a book club service which was in
existence for about 12 years ceasing in 2002. For over ten
years, opposer has brought chefs into supermarkets to teach
cooking healthy meals; it has put “freestanding inserts” in
about one thousand different newspapers; it has provided at
least one press release a month in connection with its
“PREVENTION” magazine and the press releases are sent to
over 2000 media outlets; and opposer has been involved in
providing seminars on various health topics through
professional events such as the American Dietetics
Association Conference, and through opposer’s own
“PREVENTION Walking Rally,” targeted to the general public.
Opposer has a website which covers the same topics as
the magazine including breaking news in the medical field,
such as vaccines; it receives about 600,000 visitors per
month.
As explained previously, opposer has introduced twenty
of its registrations for marks which consist of or include
the word PREVENTION into the record. The most relevant of
those are the following:
(1) Registration No. 694267, issued March 8, 1960, for
the mark PREVENTION for a “magazine” (Section 8 affidavit
accepted, Section 15 affidavit acknowledged, renewed);
(2) Registration No. 2222899, issued February 9, 1999
for the mark PREVENTION HEALTH BOOKS for a “series of books
on health, fitness, diet, exercise and lifestyle” (“Health
Books” is disclaimed);
Opposition Nos. 91151405 & 9115406
10
(3) Registration No. 2118079, issued December 2, 1997,
for the mark PREVENTION MAGAZINE HEALTH BOOKS for a “series
of books on health, fitness, diet, exercise and lifestyle”
(“Magazine Health Books” is disclaimed);
(4) Registration No. 1455284, issued September 1,
1987, for the mark PREVENTION’S FAMILY HEALTH LIBRARY for a
“series of health related books published periodically”
(“Family Health Library” is disclaimed)(Section 8 affidavit
accepted, Section 15 affidavit acknowledged);
(5) Registration No. 1959078, issued February 27,
1996, for the mark PREVENTION’S GUIDE for a “magazine in the
field of health, fitness, diet, exercise and related
lifestyle issues,” (“Guide” is disclaimed)(Section 8
affidavit accepted, Section 15 affidavit acknowledged);
(6) Registration No. 1929896, issued October 24, 1995,
for the mark THE PREVENTION PULSE for a “newsletter in the
field of health and fitness” and “conducting business
surveys in the field of public opinion and market research”
(Section 8 affidavit accepted, Section 15 affidavit
acknowledged);
(7) Registration No. 1296113, issued September 18,
1984, for the mark THE PREVENTION TOTAL HEALTH SYSTEM for a
“series of books devoted to health topics” (“Health” is
disclaimed)(Section 8 affidavit accepted, Section 15
affidavit acknowledged);
(8) Registration No. 1854917, issued September 20,
1994 for the mark PREVENTION AT WORK for educational
services namely conducting seminars on various health
topics, and for providing health information; fitness
testing; nutrition counseling, and motivational programs in
the nature of health, fitness and nutritional counseling
(Section 8 affidavit accepted, Section 15 affidavit
acknowledged); and
(9) Registration No. 2643325, issued October 29, 2002,
for the mark PREVENTION for “production of radio and
television programs and entertainment services, namely,
conducting a series of programs in the fields of health,
fitness, diet, exercise and lifestyle distributed over
radio, television, satellite, cable, audio and visual media,
and via a global computer network” and “information services
in the fields of health, fitness, diet, exercise and
lifestyle provided electronically via a web site on a multi-
user global computer information network; and electronic
publications via the world wide web containing on-line
Opposition Nos. 91151405 & 9115406
11
magazines, columns and articles in the fields of health,
fitness, diet, exercise and lifestyle.”
A significant part of opposer’s circulation and sales
of its Prevention magazine comes from subscription.
However, there is also a large distribution through retail
chain stores such as Wal-Mart and Kmart; supermarket stores
such as Safeway and Kroeger; bookstores such as Barnes &
Noble and Borders; drug stores such as CVS and Eckerd;
specialty stores such as health food stores and fitness
centers; and in major transportation centers such as train
stations and airports. In addition, opposer distributes the
publication free to doctors’ offices, emergency clinics,
sports medicine clinics, and the like.
Opposer distributes Prevention magazine through its
“Spirit of Women Health Network,” which is a partnership
between opposer and about a dozen hospital networks
throughout the country, representing about 80 hospitals. It
is an educational program to provide information to women
about their health. Specifically, through this program
opposer distributes about 110,000 free copies of its
publications to these hospitals for educational programs on
such health issues as diabetes or heart disease. In
September 2002, the Spirit of Women partnership offered a
cruise, which included healthy lifestyle seminars, daily
fitness programs, workshops, etc., under opposer’s
PREVENTION mark.
Opposition Nos. 91151405 & 9115406
12
Opposer sells videotapes (commenced in 1999 and with
plans to produce at least two per year for the next five
years) and audiotapes (since at least 1996) on health-
related topics (e.g., fitness, exercise, disease specific
information) under opposer’s PREVENTION mark. It also sells
various collateral goods such as umbrellas, golf balls,
binoculars, note pads, calendars, recipe cards, towels, hats
and shirts under this mark.
Opposer’s annual sales and advertising figures for the
last five years were submitted under seal as confidential
but suffice it to say, they are extremely significant
numbers.
Opposer engages in partnerships with radio media,
including one with CBS whereby opposer provides five scripts
a week for five health minutes read as a Health Watch Tip
each weekday. Through a contractor, since 1999 opposer has
offered “PREVENTION Walking Tours” throughout the United
States and in Canada and Europe. Partnerships with various
television media include one with NBC involving one minute
“Ounce of Prevention Tips” distributed to over 200
affiliates begun in 1999; a more recent one with CBS
involving market research or polls on important health
topics, a monthly segment on CBS’s The Early Show, and a
newly-planned series of afternoon specials; one with The
Weather Channel for two years in 2000-2002; and one with The
Opposition Nos. 91151405 & 9115406
13
Discovery Channel and The American Cancer Society involving
a poll on cancer myths, including a “Discovery
Health/Prevention Magazine Special” on cancer. It partners
with print media such as “The New York Times” which
syndicates articles from Prevention Magazine nationwide.
Opposer collaborates with other organizations to offer
medical testing. For example, opposer partnered with Wal-
Mart and a pharmaceutical company in November 2000 to offer
glucose screening for diabetes for customers at Wal-Mart;
and in 1999 opposer co-sponsored with Pfizer Corporation
(and other companies) the first of its “Heart Healthy
Tours,” involving an 18-wheel truck (opposer’s PREVENTION
mark covering the 64-foot sides of the truck) visiting
various retail locations and health fairs throughout the
United States. Through this program, opposer and the co-
sponsors provide (i) several types of screening and tests
(e.g., cholesterol tests, general health assessment tests,
bone density tests, derma tests) free of charge, and (ii)
health information, also free of charge. The truck was on
the road for six months from May to October, going to over
25 locations with an average of 500 tests per location and
the truck tours have occurred three times, thus involving
over 30,000 testings. Another truck tour is being planned.
Opposer’s editor-in-chief of Prevention magazine,
Catherine Cassidy, testified that through opposer’s
Opposition Nos. 91151405 & 9115406
14
publications, seminars, and other activities, all offered
under its PREVENTION mark, opposer “offers advice and
instruction in connection with new therapies,… new
vaccines,… first aid.” (Dep., pp. 65-66.)
Applicant, Healthy Heart Review, Inc., was first
organized in 1993 and was incorporated around 1995 or 1996.
It offers classes (online and at physical locations) on
topics such as CPR, first aid, wellness, and travel
medicine; and it provides flu and pneumonia vaccinations, as
well as medical and diagnostic testing. In its early years,
applicant provided tests relating to the heart (e.g.,
cholesterol, blood pressure, body composition), but it
branched out to other health areas such as drug tests and
bone density tests. It was then that applicant decided to
select a new, more comprehensive mark, first using
“PREVENTION PLUS,” but later changing the mark to
“PREVENTION MD.” According to Mr. Watson, applicant’s
president, applicant “believes very much in proactive rather
than reactive health.” (Dep., p. 13.)
Applicant has two offices (in eastern and western
Washington state); and it offers its services (classes,
testing and vaccinations) mainly to hospitals, corporations
and at private health fairs and supermarkets. Applicant has
a website (“preventionmd.com”) where it advertises its
services and provides online classes. It also produces
Opposition Nos. 91151405 & 9115406
15
posters and fliers to advertise the flu and pneumonia
vaccinations. Specifically, applicant offers its services
to the public, but most of its customers for CPR/first aid
classes are hospitals. Applicant’s flu and pneumonia
vaccinations are generally done through corporations such as
Safeway and Bi-Mart for the public, or for corporate clients
such as Bank of America for the employees, or for high-rise
buildings in Washington cities such as Seattle and Bellevue.
The flu and pneumonia vaccinations are offered in the states
of Washington, Oregon, Idaho and Montana, and applicant’s
other services are conducted within the state of Washington.
Applicant offers a class in conjunction with the American
Heart Association Training Center. Applicant provides
travel vaccinations through its two offices.
Applicant markets its services by sending letters to
corporations and it follows up with telephone calls.
Applicant is aware of no instances of actual confusion.
Priority
In these consolidated oppositions, as explained
earlier, opposer has filed status and title copies of twenty
of its registrations.5 In view of opposer’s two valid and
5 Opposer submitted proper status and title copies of twenty
registrations under a timely notice of reliance filed in February
2003. In this regard, when a registration owned by a party has
been properly made of record in an inter partes case, and there
are changes in the status of the registration between the time it
Opposition Nos. 91151405 & 9115406
16
subsisting registrations for educational and informational
services, the issue of priority with respect to educational
services does not arise herein. See King Candy Company v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). Opposer’s two registrations are: (1)
Registration No. 1854917 for the mark PREVENTION AT WORK for
the following services:
“educational services, namely,
conducting seminars on the subjects of
health, fitness, nutrition, and other
related topics; fitness instruction, and
publication of magazines, informational
booklets and printed materials on the
subject of health, fitness, nutrition
and other related topics,” and
“providing health information; fitness
testing; nutrition counseling, and
motivational programs in the nature of
health, fitness and nutritional
counseling”; and
(2) Registration No. 2643325 for the mark PREVENTION for the
following services:
“production of radio and television
programs; and entertainment services,
namely, a continuing series of programs
in the fields of health, fitness, diet,
exercise and lifestyle distributed over
radio, television, satellite, cable,
was made of record and the time the case is decided, the Board
will take judicial notice of, and rely upon, the current status
of the registration as shown by the records of the United States
Patent and Trademark Office. See TBMP §704.03(b)(1)(A) (2d ed.
June 2003), and the cases cited therein. The Board hereby takes
judicial notice that five of the twenty registrations are no
longer valid and subsisting. Specifically, Registration Nos.
1183328 (expired, Section 9); 2005317 (cancelled Section 8);
2017515 (cancelled Section 8); 2040555 (cancelled Section 8); and
2046093 (cancelled Section 8). These registrations will not be
further considered herein.
Opposition Nos. 91151405 & 9115406
17
audio and visual media, and via a global
computer network,” and
“information services in the fields of
health, fitness, diet, exercise and
lifestyle provided electronically via a
web site on a multi-user global computer
information network; and electronic
publications via the world wide web
containing on-line magazines, columns
and articles in the fields of health,
fitness, diet, exercise and lifestyle.”
Opposer has also established common law rights in its
PREVENTION mark in connection with the medical tests and
screenings done on its “Heart Healthy Tours” as of 1999. We
recognize that opposer offered these medical tests and
screenings under the auspices of its Prevention Magazine.
Nonetheless, as fully discussed later herein, we find that
opposer’s PREVENTION mark is famous for publications
relating to health and wellness; and that the public
receiving the medical tests and screenings would understand
the tests were offered by opposer (along with the co-
sponsors) as part of opposer’s PREVENTION marketing, and
they would associate opposer as a source of the medical
tests and screenings.
Applicant’s earliest proven first use is sometime in
2000, perhaps late 2000. Applicant’s president, Rodney
Watson, testified as follows:
Q. When did you start using that mark
[PREVENTION MD]?
A. I believe we started using it about
2000, I think. Originally, we
started out with Prevention Plus.
Opposition Nos. 91151405 & 9115406
18
Q. And you started using prevention MD
in about July of 2000?
A. Somewhere in that -- yes, somewhere
in that time frame. (dep., p.8);
Q. When again, did you switch to
Prevention MD, do you recall?
A. It would have been right at -- to
my recollection it was right at the
end of 2000, somewhere in that
area, I believe. I am not entirely
sure, but I think around 2000.
(dep., p. 12); and
Q. I notice that the report [Exhibit
12 a trademark search report for
the mark Prevention Plus] has a
date on the -- not the cover page,
but the first page inside the
report of May 2000.
A. Yes, it does.
Q. Does that help you remember when
you began using Prevention MD in
connection with your services?
A. Well, it was obviously after that
date, but again, it’s just -- you
know, it is gone. It would have
been, you know, late 2000 when we
started, somewhere in that area
that we started making -- [a change
from Prevention Plus]. (dep., pp.
27-28).
Thus, opposer has established prior common law rights
with regard to medical testing and diagnostic services.
Likelihood of Confusion
We turn now to consideration of the issue of likelihood
of confusion. Our determination of likelihood of confusion
is based on an analysis of all of the 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 &
Opposition Nos. 91151405 & 9115406
19
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003). Based on the record before
us, we find that confusion is likely.
The first du Pont factor we consider in this case is
the fame of opposer’s mark. Opposer has clearly established
that its mark PREVENTION for magazines and publications on
health and fitness is famous within the meaning of the du
Pont factors as shown by opposer’s extremely extensive
annual sales figures and advertising sums, and the
tremendous success of the PREVENTION magazine from its
launch in 1950, having the largest circulation of any
magazine in the health field and fourteenth in circulation
of all magazines (ahead of Sports Illustrated and Playboy).
The circulation numbers are 3.2 million subscriptions and 10
million “pass along” readership.
We are aware that applicant contends opposer’s mark is
famous only for magazines. However, we find not only that
opposer has established the fame of its PREVENTION mark for
magazines, but also that the fame of the mark extends into
the health and wellness field. The fame of opposer’s mark
increases the likelihood that consumers will believe that
applicant’s services emanate from or are sponsored by the
same source. See Recot Inc. v. M.C. Becton, 214 F.3d 1332,
54 USPQ2d 1894 (Fed. Cir. 2000); and Kenner Parker Toys Inc.
Opposition Nos. 91151405 & 9115406
20
v. Rose Art Industries Inc. 963 F.2d 350, 22 USPQ2d 1453
(Fed. Cir. 1992). As the Court stated in the Kenner Parker
case, 22 USPQ2d at 1456:
A strong mark, on the other hand, casts
a long shadow which competitors must
avoid. See e.g., Nina Ricci, 889 F.2d
at 1074. Thus, the Lanham Act’s
tolerance for similarity between
competing marks varies inversely with
the fame of the prior mark. As a mark’s
fame increases, the Act’s tolerance for
similarities in competing marks falls.
And the in the Recot case, 54 USPQ2d at 1897, the Court
stated:
Famous marks are accorded more
protection precisely because they are
more likely to be remembered and
associated in the public mind than a
weaker mark.
…
This reasoning applies with equal force
when evaluating the likelihood of
confusion between marks that are used
with goods that are not closely related,
because the fame of a mark may also
affect the likelihood that consumers
will be confused when purchasing these
products. Indeed, it is precisely these
circumstances which demand great
vigilance on the part of a competitor
who is approaching a famous mark, for,
as the present case illustrates, the
lure of undercutting or discounting the
fame of a mark is especially seductive.
This factor, the fame of opposer’s mark, weighs heavily
in opposer’s favor.
Turning next to a consideration of the parties’
respective goods and services, in Board proceedings, the
issue of likelihood of confusion must be determined in light
Opposition Nos. 91151405 & 9115406
21
of the goods or services as identified in the involved
application and registration and, in the absence of any
specific limitations therein, on the presumption that all
normal and usual channels of trade and methods of
distribution are or may be utilized for such goods or
services. See Octocom Systems Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990); Canadian Imperial Bank of Commerce, N. A. v. Wells
Fargo Bank, 811 F.2d 490, 1 USPQ2d 1813, 1815 (Fed. Cir.
1987); and CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198
(Fed. Cir. 1983). Of course, the plaintiff may assert (and
prove) common law rights in a particular mark for particular
goods or services as well. See Towers v. Advent Software
Inc., 913 F.2d 942, 16 USPQ2d 1039 (Fed. Cir. 1990).
Applicant’s services are essentially (i) educational
services providing instruction in CPR, first aid, wellness,
and travel medicine, and (ii) medical testing and diagnostic
services, and providing vaccinations. Opposer owns
registrations for educational services in the nature of
conducting seminars on health, fitness and related topics
and producing radio and television programs on the health
and fitness topics and providing information services in the
fields of health and fitness via a web site to a multi-user
global computer information network. As identified, we find
Opposition Nos. 91151405 & 9115406
22
that applicant’s and opposer’s educational services are
closely related.
Further, as explained earlier, opposer has established
common law rights in the use of its PREVENTION mark for
glucose screening for diabetes (in partnership with Wal-Mart
and a pharmaceutical company), and for cholesterol tests,
general health assessment tests, bone density tests, derma
tests, and the like (in partnership with Pfizer Corporation
and other co-sponsors of the “Heart Healthy Tours”).
Applicant argues that although opposer is “allegedly famous
for PREVENTION Magazine and the various promotional and
advertising activities it engages in to promote the
magazine,” opposer’s “focus is on being a source for ‘health
information’ [but it is not a medical testing company]”
(Brief, p. 15.) It is true that opposer is not a medical
testing company. However, opposer has been providing health
information in its Prevention Magazine since 1950, and it
has provided medical tests and screenings (in cooperation
with other co-sponsors) since 1999. Thus, there is a
reasonable basis for the public to attribute the medical
tests and screenings -- glucose tests in Wal-Mart, and
various medical tests and screenings on the “Healthy Heart
Tours” to opposer as the source thereof.
We find that opposer has established there is a close
relationship between applicant’s medical and diagnostic
Opposition Nos. 91151405 & 9115406
23
services and opposer’s common law rights in its mark for
medical tests and screenings.
Turning next to the du Pont factors of trade channels
and purchasers, with regard to the educational services,
neither applicant’s application nor opposer’s relevant
registrations includes any type of restriction as to trade
channels or purchasers. Therefore, we must presume in this
administrative proceeding that those services are sold in
all normal channels of trade to all usual classes of
purchasers for such goods and services. See Octocom Systems
Inc. v. Houston Computers Services Inc., supra; and Canadian
Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, supra.
With regard to the medical testing and diagnostic
services, there are no restrictions in applicant’s
identification of those services, thus it must be presumed
that they are offered by applicant through all normal
channels of trade to all usual classes of purchasers
(including the general public), and opposer’s evidence
establishes that it offers (with co-sponsors) medical tests
and screenings to the general public.
We find that the channels of trade and the classes of
purchasers for the parties’ services, as identified, and as
proven by opposer, are similar and overlapping.
Turning next to a consideration of the
similarities/dissimilarities of the marks, it is well
Opposition Nos. 91151405 & 9115406
24
settled that marks must be considered in their entireties
because the commercial impression of a mark on an ordinary
consumer is created by the mark as a whole, not by its
component parts. This principle is based on the common
sense observation that the overall impression is created by
the purchaser’s cursory reaction to a mark in the
marketplace, not from a meticulous comparison of one mark to
another to assess possible legal differences or
similarities. See 3 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, §23:41 (4th ed. 2001).
See also, Puma-Sportschuhfabriken Rudolf Dassler KG v.
Roller Derby Skate Corporation, 206 USPQ 255 (TTAB 1980).
Moreover, the differences in the marks may not be
recalled by purchasers seeing the marks at separate times.
The emphasis in determining likelihood of confusion is not
on a side-by-side comparison of the marks, but rather must
be on the recollection of the average purchaser, who
normally retains a general rather than a specific impression
of the many trademarks encountered; that is, the purchaser’s
fallibility of memory over a period of time must also be
kept in mind. See Grandpa Pidgeon’s of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA 1973); and
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735
(TTAB 1991), aff’d unpub’d (Fed. Cir., June 5, 1992).
Opposition Nos. 91151405 & 9115406
25
Our primary reviewing Court has held that in
articulating reasons for reaching a conclusion on the
question of likelihood of confusion, there is nothing
improper in stating that, for rational reasons, more or less
weight has been given to a particular feature or portion of
a mark. That is, one feature of a mark may have more
significance than another. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Sweats
Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4
USPQ2d 1793, 1798 (Fed. Cir. 1987); and In re National Data
Corporation, 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir.
1985).
In this case, both applicant’s and opposer’s marks6
share the dominant term PREVENTION. Applicant has added the
component “MD” to the word “PREVENTION,” and opposer’s marks
which consist of the word PREVENTION alone or include the
word PREVENTION therein, such as PREVENTION’S GUIDE and
6 Although opposer pleaded a “family” of marks, it did not
seriously argue that point in its brief on the case. Moreover,
it is well settled that mere adoption, use and registration of a
number of marks having a common feature for similar or related
goods or services does not in and of itself establish a “family”
of marks. Rather, in order to establish a “family” of marks, it
must be demonstrated that the marks asserted to comprise the
“family,” or a number of them, have been used and advertised in
promotional material or used in everyday sales activities in such
a manner as to create common exposure and thereafter recognition
of common ownership based upon a feature common to each mark.
See J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460,
18 USPQ2d 1889 (Fed. Cir. 1991); and Dan River, Inc. v. Apparel
Unlimited, Inc. 226 USPQ 186 (TTAB 1985). The record before us
does not prove that opposer has a “family” of PREVENTION marks.
Opposition Nos. 91151405 & 9115406
26
PREVENTION AT WORK. However, these differences do not serve
to distinguish the marks. The only word in opposer’s
primary mark and the dominant word in others of its
registrations is PREVENTION and the dominant word in
applicant’s mark is PREVENTION. Thus, these marks, although
obviously not identical, are similar in sound and
appearance.
The connotation created by both applicant’s mark
PREVENTION MD and opposer’s marks such as PREVENTION,
PREVENTION’S GUIDE and PREVENTION HEALTH BOOKS would all be
similar in that the word “PREVENTION” connotes the idea of
thwarting or averting something before it becomes a problem,
in this case relating to health and wellness. Applicant’s
mark may be viewed by consumers as another of opposer’s
“PREVENTION” marks.
When considered in their entireties, we find that
applicant’s “PREVENTION MD” mark and opposer’s “PREVENTION”
marks are similar in sound, appearance, connotation and
commercial impression. See In re Azteca Restaurant
Enterprises Inc., 50 USPQ2d 1209 (TTAB 1999).
Applicant argues that there is common use and there are
third-party registrations of marks which include the word
“PREVENTION” in the relevant fields, thus weakening the term
as a mark. As evidence thereof, applicant submitted its
notice of reliance on 23 third-party registrations which
Opposition Nos. 91151405 & 9115406
27
include the word “PREVENTION,” and opposer’s answer to
applicant’s interrogatory No. 10 asking about opposer’s
knowledge of any third-party uses, to which opposer
responded by listing five third-party marks.
To begin with, several of the 23 third-party
registrations from the USPTO’s Trademark Electronic Search
System (TESS) are not for related goods or services, (e.g.,
Registration Nos. 2614317 for a dietary supplement to assist
in recovering from a hangover; 2414692 for distributorships
and rental of medical equipment; 2042724 for mouthwash and
medicinal antiseptic gargle; and 2674701 for herbicides and
pesticides). Others are for marks with significantly
different and separate commercial impressions (e.g.,
Registration Nos. 2075208 for the mark AMERICAN SOCIETY OF
CLINICAL ONCOLOGY 1964 PREVENTION RESEARCH TREATMENT
EDUCATION and design; 2516657 for the mark CSTR EDUCATION
PREVENTION QUALITY RESEARCH and design; 2607311 for the mark
H.O.P.E. HIGHMARK OSTEOPOROSIS PREVENTION AND EDUCATION and
design; and 2442041 for the mark HEALTHY HEART COMMUNITY
PREVENTION PROJECT “YOU GOTTA HAVE HEART” and design. The
record, therefore, includes only a minimal number of
relevant third-party registrations. (Applicant listed seven
in its brief on appeal.)
Moreover, it is well settled with regard to the weight
to be given to third-party registrations, that these
Opposition Nos. 91151405 & 9115406
28
registrations are not evidence of use of the marks shown
therein in the marketplace or that the public is familiar
with them. Thus, we cannot assume that the public has
become able to distinguish between them. See Olde Tyme
Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542,
1545 (Fed. Cir. 1992); and Helene Curtis Industries Inc. v.
Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989).
Opposer’s answer to applicant’s interrogatory No. 10
shows that opposer is aware of uses by others of five
marks which include the word “PREVENTION.” But, applicant
did not pursue information on any of these third-party uses
and there is no further information in the record thereon
(e.g., the goods or services involved, the nature of the
uses, the extent of the uses). Therefore, this evidence of
third-party use is entitled to little probative weight under
the du Pont factor of the number and nature of similar marks
in use.
In short, the mere fact that there are a few third-
party registrations and that opposer is aware of a few
third-party uses of marks which include the term
“PREVENTION” does not detract from opposer’s use of and the
public perception of its marks, including the fame of
opposer’s marks as discussed above.
The absence of actual confusion is not surprising given
the relatively short duration of use by applicant of its
Opposition Nos. 91151405 & 9115406
29
mark (commencing sometime in 2000), and that applicant
offers its services in a limited geographic area in the
Northwest. Thus, this du Pont factor is neutral. In any
event, the test is not actual confusion, but likelihood of
confusion. See Weiss Associates Inc. v. HRL Associates
Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990); and In
re Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209 (TTAB
1999).
In balancing the du Pont factors in this case, we keep
in mind the holding of our primary reviewing Court that
fame, when present, plays a “dominant” role in determining
the question of likelihood of confusion. For example, in
the Recot case, 54 USPQ2d at 1897 and 1898, the Court
stated:
The fifth DuPont factor, fame of the
prior mark, when present, plays a
“dominant” role in the process of
balancing the DuPont factors. Famous
marks thus enjoy a wide latitude of
legal protection. (Citations omitted.)
…
Accordingly, we hold that the fame of
the mark must always be accorded full
weight when determining likelihood of
confusion.
…
Indeed, this court and its predecessor
court have consistently stated that the
fame of the mark is a dominant factor in
the likelihood of confusion analysis for
a famous mark, independent of the
consideration of the relatedness of the
goods.
Opposition Nos. 91151405 & 9115406
30
Given the fame of opposer’s mark, and the long shadow
it casts, we find that the marks and the goods and services
are sufficiently similar and related to support a finding of
likelihood of confusion. (And in this case it is also
established that there are overlapping trade channels and
similar purchasers.)
We agree with applicant that there is no evidence of
applicant’s intent to cause confusion in this case.
Nonetheless, this factor is of little weight in this case
because, as stated by the Court of Appeals for the Federal
Circuit (our primary reviewing court), in J & J Snack Foods
Corp. v. McDonald’s Corp., supra, 18 USPQ2d at 1891:
“Whether there is evidence of intent to trade on the
goodwill of another is a factor to be considered, but the
absence of such evidence does not avoid a ruling of
likelihood of confusion. (citation omitted).”
While we have no doubt in this case, if there were any
doubt on the question of likelihood of confusion, it must be
resolved against the newcomer as the newcomer has the
opportunity of avoiding confusion, and is obligated to do
so. See TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44 USPQ2d
1315 (Fed. Cir. 1997); and In re Hyper Shoppes (Ohio) Inc.,
837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The oppositions are sustained and
registration to applicant is refused for each application.