The U. S. Court of Appeals for the Federal Circuit reversed the Trademark Trial and Appeal Board’s (the Board) decision, concluding that the trademark TAKETEN used for a residential health improvement program can co-exist with the mark TAKE 10! used for printed health material relating to an initiative encouraging schools to provide physical activity programs. In Re St. Helena Hospital, Case No. 14-1109 (Fed. Cir., Dec. 16, 2014) (Linn, J.).

St. Helena offers a 10-day residential health improvement program at its in-patient facility in St. Helena, California under the name TAKETEN. In 2011, St. Helena filed a trademark application for its TAKETEN mark for use in connection with “health care services, namely, evaluating weight and lifestyle health and implementing weight and lifestyle health improvement plans in a hospital-based residential program” in International Class 44. The trademark examining attorney assigned to the application refused registration of the TAKETEN application, based on a prior registration for TAKE 10! for use in connection with “printed manuals, posters, stickers, activity cards and educational worksheets dealing with physical activity and physical fitness” in Class 16. The Board affirmed the refusal to register the TAKETEN mark based on likelihood of confusion citing to the DuPont factors of similarity or dissimilarity of the marks in terms of appearance, sound, meaning and commercial impression; similarity or dissimilarity and nature of the goods and services; similarity or dissimilarity of established, likely-to-continue channels of trade; and conditions under which and buyers to whom sales are made, i.e., degree of consumer care. St. Helena appealed.

The Federal Circuit reversed after reexamining each of the four DuPont factors considered by the Board. The Court agreed with the Board that the similarity of the marks favored a finding of likelihood of confusion. However, the Court held that any likelihood of confusion was dispelled by the dissimilarities in the respective goods and services and the high degree of consumer care used in selecting the applicant’s services. The Court clarified the standard for assessing the similarity of goods and services where the relatedness of the goods is not obvious: “In situations like the present, in which the relatedness of the goods and services is obscure or less evident, the PTO will need to show ‘something more’ than the mere fact that the goods and services are ‘used together.’” Rather, the Court explained, the Patent and Trademark Office cannot refuse registration simply because goods and services are similar; there must be a “persuasive evidentiary showing” of that the goods and services are commercially related: “The mere fact that goods and services are ‘used together’ does not, on its own, show relatedness.” Finally, the Court found that the Board erred in assessing the factor of degree of customer care.