Sharp Healthcare

Trademark Trial and Appeal Board

Jan 6, 2021

87927454 (T.T.A.B. Jan. 6, 2021)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: January 6, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Sharp Healthcare
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Serial No. 87927454
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Peter K. Kahn of Pillsbury Winthrop Shaw Pittman LLP,
for Sharp Healthcare
Gidette Cuello, Trademark Examining Attorney, Law Office 125,
Heather Biddulph, Managing Attorney.
_____

Before Taylor, Shaw and Lebow,
Administrative Trademark Judges.

Opinion by Lebow, Administrative Trademark Judge:
Applicant, Sharp Healthcare, applied to register the mark BEST HEALTH, in
standard characters, on the Principal Register for “Insurance services, namely,
underwriting, issuance and administration of health insurance” in International
Class 36, and “Health care” services in International Class 44, claiming acquired
distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).1

1 Application Serial No. 87927454 was filed on May 18, 2018 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use anywhere and in
commerce of November 2, 2009.
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The Trademark Examining Attorney initially accepted Applicant’s claim of
acquired distinctiveness of the mark with a disclaimer of the term “HEALTH,” but
refused registration of the services in Class 36 under Sections 1 and 45 of the
Trademark Act, 15 U.S.C. §§ 1051 and 1027, on the ground that Applicant’s specimen
of use does not show use of the mark for the identified services. However, in a
subsequent corrective office action, the Examining Attorney issued a new refusal
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that
the mark is merely descriptive of the identified services, and the Section 2(f) claim
was insufficient to overcome the refusal.
When the refusals were made final, Applicant filed an appeal. After Applicant
filed its main appeal brief, the Examining Attorney withdrew the refusal to accept
the Section 2(f) claim and the Section 2(e)(1) refusal, leaving the Sections 1 and 45
specimen refusal as the only issue on appeal. The appeal is fully briefed. We affirm
the specimen refusal in Class 36.2
I. Applicable Law
A service mark is used in commerce “when it is used or displayed in the sale or
advertising of services.” Section 45 of the Trademark Act, 15 U.S.C. § 1127. “[A]n
acceptable specimen must show ‘some direct association between the offer of services
and the mark sought to be registered therefor.’” In re Pitney Bowes, Inc., 125 USPQ2d
1417, 1419 (TTAB 2018) (quoting In re Universal Oil Prods. Co., 476 F.2d 653, 177
USPQ 456, 457 (CCPA 1973). In determining “whether a mark is used in connection

2 The Class 44 services are not at issue in this appeal.
Serial No. 87927454
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with the services described in the [application], a key consideration is the perception
of the user.” In re JobDiva, Inc., 843 F.3d 936, 121 USPQ2d 1122, 1126 (Fed. Cir.
2016).
II. The Specimens of Use
Applicant provided three substitute specimens of use in response to the
Examining Attorney’s rejection of specimens filed with the application, including
those comprised by following excerpts from Applicant’s website:
Specimen 1
3

3 March 18, 2019 Response to Office Action, TSDR 7. All citations to the TSDR database are
to the downloadable .pdf version of the documents.
Serial No. 87927454
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Specimen 2
4

4 Id. at 8.
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A close-up of the relevant portion of Specimens 1 and 2 above is shown below:

Specimen 3
5

5 Id. at 9.
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Thereafter, in response to the Examining Attorney’s rejection of the substitute
specimens, Applicant submitted a fourth substitute webpage specimen including the
below-shown excerpt:
Specimen 4
6

6 October 11, 2019 Response to Office Action, TSDR 14.
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III. Applicant’s Arguments
Applicant asserts that its October 11, 2019 substitute specimen (identified as
“Specimen 4” above) “shows use of the BEST HEALTH mark immediately adjacent
to the SHARP HEALTH PLAN mark.”7 Applicant further emphasizes that “because
the BEST HEALTH plan benefit requires the consumer to first become a plan
member, clearly [sic] establishes that the BEST HEALTH mark is directly associated
with Applicant’s insurance services.”8 Moreover, according to Applicant, the mark is
used
on a website that is exclusively focused on the applicant’s health plan
services…. Everything on the [] website is related to the health plan
(insurance) services. Applicant submits that the website must be
considered in its entirety. The mark/services connection can exist as long
as the mark and services are described on the webpages. As can be seen
from the above specimen excerpts, pages showing the BEST HEALTH
mark and the pages detailing the insurance services are linked to each
other. The page showing the BEST HEALTH mark also includes the logo
and link to the plan details…. Applicant submits that use in this manner
on an insurance focused website shows a direct association between the
mark and the Sharp Health Plan services.9

IV. The Examining Attorney’s Arguments
The Examining Attorney counters that Applicant’s specimens show that BEST
HEALTH is used in connection with a “wellness program,” not underwriting,
issuance, and administration of health insurance.10 She argues that “Applicant’s

7 4 TTABVUE 10 (Applicant’s Brief).
8 Id. at 12 (referring to the declaration of Applicant’s Director of Marketing and Customer
Strategy, Thomas Carroll, submitted with Applicant’s October 11, 2019 Response to Office
Action, TSDR 16-18, ¶ 8).
9 Id. at 10-11.
10 6 TTABVUE 6-7 (Examining Attorney’s Brief).
Serial No. 87927454
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service activities in Class 36 are too attenuated from the proposed mark in terms of
both proximity and logical connection.”11 In particular,
[t]he specimens do not create a direct association with the applied-for
services because the specimens of record indicate that “Best Health is a
wellness program,” and the descriptions of the services offered under
BEST HEALTH program fail to reference any activities involving
“underwriting, issuance and administration of health insurance.” The
fact that the mark is used in connection with a benefit of a health plan
does not create a direct association with the activities of underwriting,
issuing or administering health insurance.12

…

Here, references to the applied-for service activities are indirect, and
mainly appear in connection with the wording “Sharp Health Plan.”
Applicant’s specimens indicate that BEST HEALTH is used in
connection with a health wellness program that is offered under an
insurance plan. Consumers are likely to create a direct association
between BEST HEALTH and a wellness program based on Applicant’s
direct and clear statements indicating that “Best Health is a wellness
program.” Consumers of the services are not likely to view BEST
HEALTH as an indicator of source for insurance underwriting, issuance
and administration in the field of health. Applicant’s specimens do not
show a direct association with the Applicant’s services in Class 36.

V. Analysis
It is plain from the specimens of record that Applicant uses the mark SHARP
HEALTH PLAN on its website as a house mark to promote its health insurance and
health care services generally. The question presented by this case, however, is
whether the use of another mark on the same website, here BEST HEALTH—which
is used to denote or refer only to a specific program or benefit provided to consumers
of Applicant’s insurance services—constitutes the provision of those same services

11 Id. at 9.
12 6 TTABVUE 7 (Examining Attorney’s Brief).
Serial No. 87927454
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merely by virtue of their being promoted together on the same webpage. On the record
of this case, we find that it does not.
It is not sufficient to show, as Applicant urges, that because “everything on [its]
website relates to the Applicant and its insurance related services,” the specific
program advertised by the BEST HEALTH mark will be perceived be consumers as
the provision of underwriting, issuance, administration of health insurance.
Companies, in addition to a house mark, may have any number of marks to designate
one or more categories of goods and services they provide. For example, a hotel may
provide free airport shuttle services under the mark AIRPORT BEST, and may
promote those shuttle services in close association with the its lodging services, but
such mark would not necessarily be perceived as identifying lodging services
themselves.
While “[s]pecimens showing the mark used in rendering the identified services
need not explicitly refer to those services in order to establish the requisite direct
association between the mark and the services … ‘there must be something which
creates in the mind of the purchaser an association between the mark and the service
activity.’” In re Way Media, 118 USPQ2d 1697, 1698 (TTAB 2016) (quoting In re
Johnson Controls, Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)); accord In re JobDiva,
Inc., 121 USPQ2d 1122, 1126 (“[T]he question is whether the evidence of JobDiva’s
use of its marks sufficiently creates in the minds of purchasers an association
between the marks and JobDiva’s personnel placement and recruitment services.”)
(internal quotation marks, brackets, and citation omitted). In the present case, the
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specimens provided by Applicant very clearly show that the BEST HEALTH mark
denotes a specific wellness program provided to customers of Applicant’s insurance
services, but make no direct association with underwriting, issuance and
administration of health insurance.
Citing In re Ancor Holdings, LLC, 79 USPQ2d 1218, 1220 (TTAB 2006) for the
proposition that “[i]n determining whether a specimen is acceptable evidence of
service mark use, [the Board] may consider applicant’s explanations as to how the
specimen is used, along with any other available evidence in the record that shows
how the mark is actually used,” Applicant places great emphasis on the statement of
Thomas Carroll, Applicant’s Director of Marketing and Customer Strategy, that “the
BEST HEALTH program is a health plan benefit exclusively available to insurance
plan members of the Sharp Health Plan.”13 Because of this, Applicant argues,
“website advertisements referring to the BEST HEALTH program shows [sic] a direct
association between the BEST HEALTH mark and the Sharp Health Plan insurance
services.”14
We are not persuaded by this argument. While we agree that the perception of
whether a mark identifies particular services must be based on the context of the
specimen being considered, the fact that consumers must already be members of
Applicant’s insurance plan to take advantage of Applicant’s benefits and programs
offered within the plan is not determinative, nor does Applicant explain why it should

13 7 TTABVUE 8 (Applicant’s Reply Brief).
14 Id.
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be. Many companies require membership in order to access benefits and services; it
does not follow, logically, that all other services provided by a company under
different marks therefore promote the same services.
VI. Conclusion
Based on our review of the record, we find that while Applicant’s specimens of
record establish a connection between the mark BEST HEALTH and a wellness
program offered by Applicant, they do not show a direct association with the provision
of underwriting, issuance and administration of health insurance in Class 36.
Decision: The refusal to register in Class 36 is affirmed.