Senior Market Sales, Inc.

Trademark Trial and Appeal Board

Sep 16, 2015

No. 86029189 (T.T.A.B. Sep. 16, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: September 16, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Senior Market Sales, Inc.
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Serial No. 86029189
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Cecil E. Key of Key IP Law Group PLLC,
for Senior Market Sales, Inc.
Jason F. Turner, Trademark Examining Attorney, Law Office 108,
Andrew Lawrence, Managing Attorney.
_____

Before Wellington, Lykos and Gorowitz,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On August 5, 2015, Senior Market Sales, Inc. (“Applicant”) filed an application to
register on the Principal Register the mark MEDICARE MADE EASY in standard
character format for “[i]nsurance premium rate computing” in International Class
36 and “[p]roviding on-line non-downloadable software for providing comparative
quotes for Medicare insurance” in International Class 42.1 The application includes
a disclaimer of the word MEDICARE apart from the mark as shown.

1 Application Serial No. 86029189, filed under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b), alleging a bona fide intent to use the mark in commerce.
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The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground
that Applicant’s mark so resembles the registered mark MEDICARE MADE
EASY, also in standard characters, on the Principal Register for “[p]roviding
comprehensive healthcare services for Medicare eligible beneficiaries in the form of
a health maintenance organization” in International Class 44, that, when used on
or in connection with Applicant’s identified services, it is likely to cause confusion or
mistake or to deceive.2 The registration likewise includes a disclaimer of the word
MEDICARE.
When the refusal was made final, Applicant appealed. The appeal is now fully
briefed. For the reasons set forth below, we affirm the Section 2(d) refusal.
Likelihood of Confusion Analysis
We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See
also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods and/or services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d
1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). These factors and others are discussed below. See

2 Registration No. 2982716, registered on August 9, 2005; renewed.
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M2 Software, Inc. v. M2 Commc'ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944 (Fed. Cir.
2006) (even within du Pont list, only factors that are “relevant and of record” need
be considered).
The Marks
Commencing with the first du Pont factor, it is undisputed that the marks are
identical. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (the first du Pont
likelihood of confusion factor involves an analysis of the similarity or dissimilarity
of the marks in their entireties as to appearance, sound, connotation and
commercial impression). Indeed, because both marks are in standard characters,
they could conceivably be used in the same stylized format. See Trademark Rule
2.52(a); 37 C.F.R. § 2.52(a). See also Trademark Manual of Examining Procedure
(“TMEP”) § 807.03(a) (July 2015) (“If the applicant files an application on paper that
includes a standard character claim, the applicant may depict the mark in any font
style; may use bold or italicized letters; and may use both uppercase and lowercase
letters, all uppercase letters, or all lowercase letters, since no claim is made to any
particular font style, size, or color.”) (emphasis in original). We hasten to add that
this is not a situation where identical marks are used on services so dissimilar as to
engender different commercial impressions. Compare In re Sydel Lingerie Co., Inc.,
197 USPQ 629 (TTAB 1977) (no likelihood of confusion found between BOTTOMS
UP for ladies’ and children's underwear and BOTTOMS UP for men's suits, coats
and trousers). Thus, because the marks are identical in appearance, sound,
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connotation and commercial impression, the first du Pont factor weighs in favor of
finding a likelihood of confusion.
The Services
Turning now to the second du Pont factor, a comparison of Applicant’s and
Registrant’s respective services as they are identified in the application and the
cited registration, we bear in mind that where identical marks are involved, as is
the case here, the degree of similarity between the services that is required to
support a finding of likelihood of confusion declines. In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1688-89 (Fed. Cir. 1993); Time Warner Entertainment Co. v.
Jones, 65 USPQ2d 1650 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d 1812
(TTAB 2001). Nonetheless, it is still the Examining Attorney’s burden to establish
that the services are related to support a finding of likelihood of confusion. See, e.g.,
In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009) (finding
Office had failed to establish that wine and vodka infused with caffeine are related
goods). Evidence of relatedness may include news articles and/or evidence from
computer databases showing that the relevant goods/services are used together or
used by the same purchasers; advertisements showing that the relevant
goods/services are advertised together or sold by the same manufacturer or dealer;
and/or copies of prior use-based registrations of the same mark for both applicant’s
goods/services and the goods/services listed in the cited registration. See, e.g., In re
Davia, 110 USPQ2d 1810, 1817 (TTAB 2014) (finding pepper sauce and agave
related where evidence showed both were used for the same purpose in the same
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recipes and thus consumers were likely to purchase the products at the same time
and in the same stores).
Applicant argues that it occupies a different segment in the Medicare healthcare
and insurance marketplace as compared to Registrant insofar as Applicant’s
services are focused on the computation of insurance rate premiums for individual
Medicare consumers as opposed to the actual provision of healthcare services.
Applicant’s arguments are belied by the record evidence. In support of the
refusal, the Examining Attorney has made of record numerous third-party
registrations, the following which we deem relevant:
● Reg. No. 4381410 for the mark ACCOUNTABLE PROVIDER
SOLUTIONS on the Supplemental Register for “Healthcare network
administration, namely, providing business administration services for
the healthcare networks of others” in International Class 35; “Insurance
services, namely, insurance claims processing, administration and
adjustment services; insurance information and consultancy;
administration and organizing of pre-paid health care plans” in
International Class 36; and “Managed health care services” in
International Class 44;

● Reg. No. 4528020 for the mark HEALTHPARTNERS on the Principal
Register, for in relevant part, “providing on-line non-downloadable
computer software for enabling employers to access information regarding
employee health insurance plan information relating to billing, coverage,
healthcare utilization and healthcare expenditures” in International Class
42 and “health care in the nature of health maintenance organizations;
health plan member decision support services, namely, providing
healthcare information relating to maximizing health care coverage,
health care providers and facility selections and health treatment
selections” in International Class 44;

● Reg. No. 4266617 for the mark LIFEPRINT AND DESIGN on the
Principal Register for, in relevant part, “Providing information in the field
of health care; healthcare services, namely, establishing a network of
physicians, managed healthcare services, medical clinics; healthcare
services” in International Class 44; and
Serial No. 86029189
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● Reg. No. 4390544 for the mark UNITEDHEALTHGROUP on the
Principal Register for, in relevant part, “providing information in
insurance matters” in Class 36 and “Managed health care services” in
International Class 44.

As a general proposition, although third-party registrations alone are not
evidence that the marks shown therein are in use or that the public is familiar with
them, they nonetheless may have probative value to the extent they are based on
use in commerce and may serve to suggest that the services are of a kind that
emanate from a single source. See In re Infinity Broad. Corp., 60 USPQ2d 1214,
1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86
(TTAB 1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 n.6
(TTAB 1988). Here, while the services in the aforementioned third-party
registrations are not worded in an identical manner to the services at issue here,
because they are broad recitations, they necessarily encompass both Applicant’s and
Registrant’s more narrowly defined Medicare services. That is to say, the provision
of health insurance information is sufficiently broad to encompass information
regarding “insurance premium rate computing” and “comparative quotes for
Medicare insurance.” By the same token, Registrant’s more specialized health
maintenance organization (“HMO”) services directed towards Medicare patients
clearly fall under the broad category of the HMO and generalized healthcare
services identified in the aforementioned third-party registrations.
The Examining Attorney also provided evidence from the web sites of health
care providers such as Kaiser Permanente, Aetna and Humana which advertise
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both the provision of health care and HMO services as well as the hypothetical cost
of their respective health care plans for Medicare patients. This constitutes evidence
that prospective consumers of Registrant’s services are likely to simultaneously
encounter Applicant’s services in the marketplace. As such, the second du Pont
factor also weighs in favor of finding a likelihood of confusion.
The Number and Nature of Similar Marks in Use on Similar Services
We will now consider the number and nature of similar marks in use on similar
services, the sixth du Pont factor. In an ex parte appeal, “[t]he purpose of [an
applicant] introducing third-party uses is to show that customers have become so
conditioned by a plethora of such similar marks that customers have been educated
to distinguish between different such marks on the bases of minute distinctions.”
Palm Bay, 73 USPQ2d at 1694. “[T]he strength of a mark is not a binary factor” and
“varies along a spectrum from very strong to very weak.” Juice Generation, Inc. v.
GS Enters. LLC, __ F.3d __, 115 USPQ2d 1671, 1675-76 (Fed. Cir. 2015) (internal
citations omitted). “The weaker [the Registrant’s] mark, the closer an applicant's
mark can come without causing a likelihood of confusion and thereby invading what
amounts to its comparatively narrower range of protection.” Id. at 1676 (internal
citations omitted).
Applicant argues that the mark “Medicare Made Easy” is diluted and weak in
connection with Medicare health care and insurance services. In support thereof,
Applicant has made of record the following use-based third-party registrations to
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show that Registrant’s mark is diluted and entitled to a narrow scope of protection
for healthcare services.3
● Reg. No. 4220340 for the mark MEDICARE MADE SIMPLE for
“Publications, namely, informational brochures regarding Medicare
Advantage health plans for senior citizens” with a disclaimer of
“MEDICARE”;

● Reg. No. 3937637 for the mark MED B MADE EASY for “Medical
claims management services, namely, receiving, data entering, and re-
pricing of transactions that are originated by physicians, hospitals, and
ancillary medical care providers” with a disclaimer of “MED B”; and

● Reg. No. 4421388 for the mark EASYMEDICARECHOICES.COM for
“[p]roviding a web site featuring temporary use of non-downloadable
software for enabling users to answer questions about factors affecting
health care benefits that facilitates choosing health care benefit plans.”

As we have often stated, because third-party registrations of marks are not
evidence that the registered marks are in use, they are of limited probative value
for demonstrating weakness of the marks. See In re Mighty Leaf Tea, 601 F.3d 1342,
94 USPQ2d 1257, 1259 (Fed. Cir. 2010). That being said, third-party registrations
may be used to show that a term has a meaning or significance in the same way
that dictionaries are used. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189
USPQ 693, 694 (CCPA 1976). See also The Institut National des Appellations
D'Origine v. Vintners International Co. Inc., 22 USPQ2d 1190, 1196 (Fed. Cir. 1992)
(“third party registrations show the sense in which the word is used in ordinary
parlance and may show that a particular term has descriptive significance as
applied to certain goods or services.”) (internal citations omitted). See also Juice

3 Office Action Response dated May 13, 2014.

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Generation, 115 USPQ2d at 1675. Indeed, “[t]hird party registrations are relevant
to prove that some segment of the composite marks which both contesting parties
use has a normally understood and well-recognized descriptive or suggestive
meaning, leading to the conclusion that that segment is relatively weak.” Id. (citing
Tektronix, Inc. v. Daktronics, Inc., supra.). Given the meaning of MEDICARE, the
disclaimers in the application and registration appropriately reflect the descriptive
nature of the term.4 The question before us however is whether MEDICARE MADE
EASY as a whole is descriptive or suggestive to such an extent that it may be
deemed weak and less deserving of protection.
The registered mark EASYMEDICARECHOICES.COM is of little relevance here
because, aside from the presence of the top-level domain “.com,” it consists of words
(“easy” and “choices”) not found in the marks at issue in this appeal. While this
third-party mark may project a similar meaning to MEDICARE MADE EASY,
because it is so different in sound and appearance, its probative value to show that
Registrant’s mark is diluted is of minimal, if any, value. The registered mark MED
B MADE EASY is more similar to Registrant’s mark because MED B is known as a
sub-category of the Medicare insurance plan. Nonetheless, the services identified
therein are distinct from Applicant’s and Registrant’s services. That leaves us with
a single registration for the mark MEDICARE MADE SIMPLY for informational
publications. We cannot find, however, based solely on the existence of this distinct,

4 The Board takes judicial notice of the term “Medicare” which is defined as “a government
program of medical care especially for the aged” in the online version of the Merriam
Webster dictionary at http://www.merriam-webster.com/dictionary/medicare. See In re
White Jasmine, 106 USPQ2d 1385, 1392 n.23 (TTAB 2013).
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albeit similar in connotation, single third-party registration that Registrant’s mark
as a whole is descriptive or suggestive to such an extent that it deserves less
protection.
Applicant has also made of record several registered marks incorporating the
phrase “MADE EASY” the most relevant being,5
● Reg. No. 3800003 for the mark ACCESS MADE EASY for “printed
educational materials, namely, pamphlets and booklets concerning
pharmaceutical preparations used to treat conditions associated with
inflammatory processes, including hereditary angioedema” in
International Class 16; “Insurance case management services for patients
using prescription drugs, namely, medical insurance consultation
regarding the proper way to compile information for and complete medical
insurance forms; health information services, namely, providing
information and offering advice and assistance to health care providers
and their patients regarding health insurance benefits to cover the cost of
pharmaceuticals” in International Class 36; and “Disease management
services in the nature of providing patients and health care providers with
information on managing the care of patients with specific diseases and on
treatments for specific diseases” in International Class 44;

● Reg. No. 4399538 for the mark AUTHS MADE EASY for “Business
assistance services, namely, obtaining insurance verifications and
authorizations on behalf of clinics, surgery centres and hospitals for
various medicinal procedures and surgeries performed by them” in
International Class 35;

● Reg. No. 3276508 for the mark RX MADE EASY for “Insurance services,
namely, underwriting health insurance featuring a prescription drug
card” in International Class 36;

● Reg. No. 3634415 for the mark TRUPANION PET INSURANCE
MADE EASY (stylized and design) for “Underwriting health care
insurance for pets” in International Class 36;

5 Office Action Response dated May 13, 2014. Insofar as Reg. No. 3502884 was cancelled, it
has not been considered. In addition, Applicant made of record a Virginia and a Michigan
state service mark registrations for the same mark INSURANCE MADE EASY for
insurance services.
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● Reg. Nos. 3792746 and 3922832 for the marks LANG INSURANCE
SERVICE INSURANCE MADE EASY! (standard characters) and stylized
version thereof for “Insurance agency services” in International Class 36;
and

● Reg. No. 3284234 for the mark ASPEN GROUP BENEFIT ADVISORS
SOLUTIONS MADE EASY for “insurance underwriting services in the
fields of group and individual health, life, disability and long term care;
mutual fund investments; financial analysis and consultation” and
“financial administration of retirement plans, estate plans and business
continuation plans” in International Class 36.

The registrations noted above for dissimilar services such as pet insurance are of
little probative value. The remaining registrations do show a suggestive connotation
of the phrase “Made Easy” in the healthcare and health insurance industries.
Suggestive marks however are more deserving of protection than descriptive marks.
Applicant also argues that other entities commonly use the phrase “Medicare
Made Easy” or a variation thereof that either adds an additional term or uses a
synonym either for “Medicare” or “easy.” In support thereof, Applicant has
introduced the following evidence:6
● MEDICARE MADE EASY used by the Georgia Department of Human
Services to identify a workshop on Medicare;

● MEDICARE MADE EASY used by The Medicare Resource Center to
provide information about Medicare plan options and benefits as well as
providing advertising space to parties offering Medicare related services;

● MEDICARE SUPPLEMENTS MADE EASY used by an organization of
that same name for providing quotes on Medicare supplemental
insurance;

● TODAY’S MEDICARE MADE EASY for insurance agency services;

6 Office Action Response dated May 13, 2014.
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● MEDICARE MADE SIMPLE used to identify insurance agency
services;

● MEDICARE MADE CLEAR used by AARP and United Healthcare for
counseling and providing advice to consumers about Medicare; and

● MED B MADE EASY as evidence of use by the owner of the third-party
registration noted above, Omnisys, LLC.

Applicant also points to use of the mark AUTOINSURANCE MADE EASY by
Progressive Insurance for automotive insurance and LIFE MADE EASY by Life
Made Easy Home Health for home health care services.7 This constitutes evidence
that “the public may have been exposed to those internet websites and therefore
may be aware of the advertisements contained therein.” Rocket Trademarks Pty
Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1072 (TTAB 2011). We observe that only two
of the third-party uses are identical to the cited registration. We acknowledge that
the some of the remaining uses are somewhat similar in meaning to the cited mark.
Given however the large size of the health care and Medicare insurance industries,
we cannot find on the record presently before us that Registrant’s mark is weak and
diluted. We therefore find the sixth du Pont factor to be neutral.
Conditions of Sale
Next we consider the conditions under which the services are likely to be
purchased, e.g., whether on impulse or after careful consideration, as well as the
degree, if any, of sophistication of the consumers, the fourth du Pont factor.
Purchaser sophistication or degree of care may tend to minimize likelihood of
confusion. Conversely, impulse purchases of inexpensive items may tend to have the

7 Office Action Response dated May 13, 2014.
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opposite effect. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Fondee En 1772,
396 F.3d 1369, 73 USPQ2d 1689, 1695 (Fed. Cir. 2005). Applicant contends that the
reasonably prudent consumer will exercise a great degree of care in purchasing
Applicant’s and Registrant’s services. Because the involved application and
registration are unrestricted, we must assume that the services are sold to ordinary
purchasers who exercise ordinary care in their purchase. Here, the class of
consumers for the respective services consists of consumers insured (or seeking to
be) under Medicare. There is no evidence that this segment of the general public
would necessarily exercise a higher degree of care when encountering the services.
Accordingly, we find that this factor is neutral.
In the present case, each of the du Pont factors discussed above either favor a
finding of likelihood of confusion or is deemed neutral. After considering all of the
evidence properly of record and arguments pertaining to the du Pont likelihood of
confusion factors, we find that there is a likelihood of confusion between Applicant’s
applied-for and Registrant’s registered mark.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.