In Re ST. HELENA HOSPITAL

United States Court of Appeals
for the Federal Circuit
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IN RE ST. HELENA HOSPITAL
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2014-1009
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Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in Serial No.
85/416,343.
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Decided: December 16, 2014
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BRADLEY P. HEISLER, Heisler & Associates, of Rose-
ville, California, argued for appellant.
CHRISTINA J. HIEBER, Associate Solicitor, argued for
appellee. With her on the brief were NATHAN K. KELLEY,
Solicitor and THOMAS L. CASAGRANDE, Associate Solicitor.
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Before LOURIE, LINN and O’MALLEY, Circuit Judges.
LINN, Circuit Judge.
St. Helena Hospital (“St. Helena”) appeals from the
decision of the Trademark Trial and Appeal Board (“the
Board”) in In re St. Helena Hosp., Serial No. 85/416,343,
2013 WL 5407267 (T.T.A.B., June 25, 2013). The Board
affirmed the examiner’s rejection of St. Helena’s applica-
tion to register “TAKETEN,” under 15 U.S.C. § 1052(d)
(2012), as likely to cause confusion with the mark “TAKE
2 IN RE: ST. HELENA HOSPITAL
10!” shown in United States Registration No. 2,577,657
(“the ’657 Registration”). Because the Board erred in its
determination of likelihood of confusion, we reverse and
remand.
BACKGROUND
St. Helena conducts a 10-day residential health im-
provement program at its in-patient facility in St. Helena,
California. The program is identified by the mark
“TAKETEN.” St. Helena applied to the United States
Patent and Trademark Office (“PTO”) to register the
mark. St. Helena’s application identifies the service as
“[h]ealth care services, namely, evaluating weight and
lifestyle health and implementing weight and lifestyle
health improvement plans in a hospital-based residential
program” in class 44. St. Helena, 2013 WL 5407267, at
*1.
The examiner refused to register St. Helena’s mark,
citing a likelihood of confusion with the “TAKE 10!” mark
shown in the ’657 Registration and commonly owned U.S.
Registration No. 2,674,182 (“the ’182 Registration”) for
the mark “TAKE 10! (and Design).” Id. Both of the cited
registrations are for “printed manuals, posters, stickers,
activity cards and educational worksheets dealing with
physical activity and physical fitness” in class 16. Id.
The registration for “TAKE 10! (and Design)” also identi-
fies goods in class 9, namely, “pre-recorded videocassettes
featuring physical activity and physical fitness promotion
programs.”
St. Helena appealed to the Board, 1 which analyzed
the likelihood of confusion between the “TAKETEN” and
1At the time of the Board’s review, renewal docu-
ments were due but not yet filed for the ’182 Registration.
St. Helena, 2013 WL 5407267, at *1 n.2. The Board
IN RE: ST. HELENA HOSPITAL 3
“TAKE 10!” marks by examining the first four of the
factors discussed in Application of E.I. DuPont
DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973),
namely: (1) the similarity or dissimilarity of the marks in
terms of appearance, sound, meaning and commercial
impression; (2) the similarity or dissimilarity and nature
of the goods and services; (3) the similarity or dissimilari-
ty of established, likely-to-continue channels of trade; and
(4) the conditions under which and buyers to whom sales
are made, i.e., degree of consumer care. St. Helena, 2013
WL 5407267, at *1–5. The Board found that the balance
of the factors supported the conclusion of likelihood of
confusion and affirmed the examiner’s refusal to register
St. Helena’s mark.
St. Helena appeals. We have jurisdiction pursuant to
15 U.S.C. § 1071(a)(1) and 28 U.S.C. § 1295(a)(4)(B).
DISCUSSION
The PTO may refuse to register a trademark that so
resembles a registered mark “as to be likely, when used
on or in connection with the goods of the applicant, to
cause confusion, or to cause mistake, or to deceive.” 15
U.S.C. § 1052(d). “Whether a likelihood of confusion
exists is a question of law, based on underlying factual
determinations.” Hewlett-Packard Co. v. Packard Press,
Inc., 281 F.3d 1261, 1265 (Fed. Cir. 2002) (quoting Recot,
Inc. v. M.C. Becton, 214 F.3d 1322, 1326 (Fed. Cir. 2000)).
To determine the likelihood of confusion, the Board and
this court consider the “relevant” DuPont factors. In re
Viterra, Inc., 671 F.3d 1358, 1361 (Fed. Cir. 2012) (“Not
all of the DuPont factors are relevant to every case, and
only factors of significance to the particular mark need be
considered.” (quoting In re Mighty Leaf Tea, 601 F.3d
therefore did not consider it in its initial analysis, id., nor
do we.
4 IN RE: ST. HELENA HOSPITAL
1342, 1346 (Fed. Cir. 2010))). The PTO bears the burden
of showing that a mark should not be registered. See 15
U.S.C. § 1052 (“No trademark . . . shall be refused regis-
tration . . . unless . . . .”).
I. Standards of Review
“This court reviews the Board’s conclusions on ques-
tions of law without deference.” Hewlett-Packard, 281
F.3d at 1265 (citing Recot, 214 F.3d at 1327). We review
the Board’s factual findings for substantial evidence,
which “requires that this court ask whether a reasonable
person might accept that the evidentiary record adequate-
ly supports the Board’s conclusion.” Id. (citing On-Line
Careline, Inc. v. America Online, Inc., 229 F.3d 1080, 1085
(Fed. Cir. 2000)).
II. Analysis
We address, in turn, each of the DuPont factors con-
sidered by the Board.
a. Similarity or Dissimilarity of the Marks
The Board found that the marks are similar in ap-
pearance, sound, meaning and commercial impression.
St. Helena, 2013 WL 5407267, at *3. In particular, the
Board concluded that the marks are “phonetically identi-
cal.” Id. at *2. It also found that, in context, the word
“ten” and the numeral “10” “mean the same thing,” and,
in context, both marks refer to taking a break from work.
Id. The Board acknowledged that St. Helena’s specimen
advertises that spending “ten days with us can put you on
the road to a lifetime of good health,” and that registrant’s
specimen advertises “Healthier Lifestyles 10 Minutes at a
Time.” Id. at *2. Finally, the Board found that the differ-
ence between the word “ten” and the numeral “10” in the
marks was “minimal,” and concluded that the similarity
of the marks supports the conclusion of likelihood of
confusion. Id.
IN RE: ST. HELENA HOSPITAL 5
St. Helena argues that the Board erred. St. Helena
focuses on the three differences in appearance between
“TAKETEN” and “TAKE 10!,” namely that (1) in
“TAKETEN” the number is spelled out rather than writ-
ten as a numeral; (2) in “TAKETEN” there is no space
between the two words; and (3) “TAKETEN” does not end
in an exclamation mark. The PTO argues that these
differences are insufficient for consumers to recognize the
marks as distinct.
St. Helena is correct that there are differences in ap-
pearance between registrant’s and applicant’s marks. But
marks “must be considered . . . in light of the fallibility of
memory” and “not on the basis of side-by-side compari-
son.” San Fernando Elec. Mfg. Co. v. JFD Elecs. Compo-
nents Corp., 565 F.2d 683, 685 (C.C.P.A. 1977). There is
nothing in the record to persuade us that any of the
differences argued by St. Helena meaningfully distinguish
the appearance of the respective marks. Accordingly, we
agree with the Board’s conclusion that the differences in
appearance are minimal.
Regarding differences in sound, St. Helena argues
that the exclamation mark in “TAKE 10!” alters the
pronunciation of the marks because the registered mark
must be uttered emphatically, whereas “TAKETEN”
would be spoken in a relaxed fashion. The PTO, quoting
Viterra, responds that “there is no correct pronunciation
of a trademark, and consumers may pronounce a mark
differently than intended by the brand owner.” 671 F.3d
at 1367. We are not persuaded that the exclamation
mark alters the pronunciation of the cited mark in any
significant way, and, thus, have no basis to question that
aspect of the Board’s decision.
Regarding differences in connotation, St. Helena ar-
gues that based on the respective specimens in the record,
“TAKE 10!” implies taking ten minutes out of your day
whereas “TAKETEN” connotes a ten-day health and
6 IN RE: ST. HELENA HOSPITAL
fitness program. The PTO responds that both specimens
connote taking a break for purposes of health and fitness
and that St. Helena’s argument inappropriately focuses
on extrinsic evidence of actual use. The Board relied on a
dictionary definition of “take ten” to conclude that both
marks connote taking a break, especially from work. St.
Helena, 2013 WL 5407267, at *2 n.3.
Substantial evidence supports the Board’s determina-
tion that registrant’s and applicant’s marks have similar
connotations. The registration for “TAKE 10!” covers
printed materials “dealing with physical activity and
physical fitness.” Id. at *1. St. Helena’s application
covers “[h]ealth care services, namely, evaluating weight
and lifestyle health and implementing weight and life-
style health improvement plans in a hospital-based resi-
dential program.” Id. While the specimens refer to days
and minutes, respectively, neither identification specifies
a certain period of time or suggests any specific meaning
of the word “TEN” or the numeral “10.” Since “the ques-
tion of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set forth
in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,”
we agree with the Board’s finding that both marks engen-
der similar connotations. See Octocom Sys., Inc. v. Hou-
ston Computer Servs., Inc., 918 F.2d 937, 942 (Fed. Cir.
1990) (citing cases).
Finally, St. Helena argues that the commercial im-
pressions are different, contending that the registered
mark “TAKE 10!” is more of a shout or command as
compared to the suggestion engendered by St. Helena’s
mark “TAKETEN.” St. Helena points to the TRADEMARK
MANUAL OF EXAMINING PROCEDURE (“TMEP”)
§ 807.12(a)(ii), which notes that the deletion of the ques-
tion mark from “GOT MILK?” “would constitute a materi-
al alteration because it changes the commercial
impression from a question to a statement.” St. Helena
IN RE: ST. HELENA HOSPITAL 7
also relies heavily on Coach Services, Inc. v. Triumph
Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012), where this
court affirmed a Board decision that two marks for
“COACH” were not similar because of different connota-
tions and commercial impressions. The PTO argues that
the exclamation mark in this case does not change the
commercial impression because, if anything, it only
changes the emphasis, and not the meaning of the phrase
“take ten.” The PTO argues that the example of “GOT
MILK?” is distinguishable because the question mark in
that context actually changes the meaning.
Here, the record only reflects one definition for the
phrase “take ten.” This distinguishes this case from
Coach, where we noted that “the word ‘coach’ . . . has
many different definitions in different contexts.” 668 F.3d
at 1369. This case is, therefore like “most cases[,] where
the addition of an exclamation point does not affect the
commercial impression of a mark.” TMEP § 807.14(c).
Accordingly, we agree that both marks engender similar
commercial impressions.
At bottom, substantial evidence supports the Board’s
conclusion that the first DuPont factor points towards a
likelihood of confusion. However, “we note that similarity
is not a binary factor but is a matter of degree.” In re
Coors Brewing Co., 343 F.3d 1340, 1344 (Fed. Cir. 2003).
Here, there are some, albeit modest, differences between
the two marks.
b. Similarity or Dissimilarity and Nature of the Goods
and Services
The Board next considered the similarity or dissimi-
larity and nature of the goods and services. This factor
considers whether “the consuming public may perceive
[the respective goods and services of the parties] as relat-
ed enough to cause confusion about the source or origin of
the goods and services.” Hewlett Packard, 281 F.3d at
1267 (citing Recot, 214 F.3d at 1329).
8 IN RE: ST. HELENA HOSPITAL
The Board concluded that consumers are likely to be-
lieve that health care services and “similarly marked”
printed materials come from the same source or are
somehow connected with or sponsored by a common
company based on several examples of organizations that
render health care services and distribute printed materi-
als. St. Helena, 2013 WL 5407267, at *3. It further found
that St. Helena’s services and the registrant’s printed
materials “would be encountered by the same persons
under conditions and circumstances that could, because of
the similarity of the marks, cause them to believe that
they emanate from the same source.” Id. at *4. The
Board recognized that in the context of food products
associated with restaurants this court requires “some-
thing more” than the fact that similar or identical marks
are used. Id. (quoting Coors, 343 F.3d at 1345 (itself
quoting Jacobs v. Int’l Multifoods Corp., 668 F.2d 1234,
1236 (C.C.P.A. 1982)). But the Board asserted that “[i]n
this case, there is no ‘something more’ standard.” Id.
St. Helena argues that the Board lacked substantial
evidence to conclude that consumers would mistakenly
believe that the registrant’s goods and the applicant’s
services come from the same source. St. Helena first
contends that while the Board identified several instances
in which written materials were provided in connection
with services similar to St. Helena’s services, the printed
materials are either different from those listed in the
“TAKE 10!” registration or unrelated to physical activity
and physical fitness. Moreover, St. Helena argues that
some of the cited printed materials do not bear the mark
used by the service provider. The PTO responds that the
respective goods and services are complementary because
they can be used together. The PTO further contends
that the complementary nature of health care services
and printed materials in general makes them so related
that consumers will be led to believe they have a common
source or origin. Finally, it contends that printed materi-
IN RE: ST. HELENA HOSPITAL 9
als distributed by programs such as St. Helena’s will bear
the same mark or name as the facility offering the pro-
gram.
Substantial evidence does not support the PTO’s as-
sertion that the cited printed materials distributed as
part of a weight loss program bear the same mark or
name as the facility offering the program. The majority of
references discussed by the Board are not included in the
record, and, accordingly, we cannot determine whether
the printed materials feature the respective facility’s
trademarks. Of the two printed materials that are in the
record, the newsletter of the Duke Diet & Fitness Center
bears Duke’s logo, but the exercise routine worksheets of
Hilton Head Health do not. And the Duke newsletter is
not within the listed class of goods and services for
the ’657 Registration, i.e., “printed manuals, posters,
stickers, activity cards and educational worksheets deal-
ing with physical activity and physical fitness,” which
makes it less probative. Accordingly, the Board’s asser-
tion that it is “inconceivable” that health services do not
include trademarks on their handouts, St. Helena, 2013
WL 5407267, at *4, which is inconsistent with the Hilton
Head example, is, at best, conclusory and unsupported.
This assertion, therefore, merits no deference. See Nat’l
Shooting Sports Found. v. Jones, 716 F.3d 200, 214 (D.C.
Cir. 2013) (“We do not defer to an agency’s ‘conclusory or
unsupported suppositions.’”) (quoting McDonnell Douglas
Corp. v. U.S. Dep’t of the Air Force, 375 F.3d 1182, 1187
(D.C. Cir. 2004)).
What the references relied on by the examiner do
show is that printed materials are used “in connection”
with various health services programs. Appellee’s Brief
at 3; St. Helena, 2013 WL 5407267, at *3. But, as we
explained in Shen Mfg. Co. v. Ritz Hotel, Ltd., the mere
fact that goods and services are “used together” does not,
on its own, show relatedness. 393 F.3d 1238, 1244 (Fed.
Cir. 2004) (quoting Packard Press, Inc. v. Hewlett-Packard
10 IN RE: ST. HELENA HOSPITAL
Co., 227 F.3d 1352, 1358 (Fed. Cir. 2000)). Rather, to rely
on the similarity of the goods and services as a basis for
refusing registration, the PTO must come forth with a
persuasive evidentiary showing of relatedness between
the goods and services at issue. Compare Shen, 393 F.3d
at 1245 (finding no correlation because “aside from the
fact that these goods are used together, there is no indica-
tion that the consuming public would perceive them as
originating from the same source”) with In re Shell Oil
Co., 992 F.2d 1204, 1207 (Fed. Cir. 1993) (finding a corre-
lation based on evidence of “overlap of consumers”).
As we have long held, “each case must be decided on
its own facts and the differences are often subtle ones.”
Jacobs, 668 F.2d at 1236 (quoting Indus. Nucleonics Corp.
v. Hinde, 475 F.2d 1197, 1199 (C.C.P.A. 1973)) (internal
citations removed). In circumstances in which the types
of goods and services in question are well-known or oth-
erwise generally recognized as having a common source of
origin, the PTO’s burden to establish relatedness will be
easier to satisfy. See Coors, 343 F.3d at 1347 (stating that
a mark for a brewpub “would clearly be related” to a mark
for beer); Hewlett-Packard, 281 F.3d at 1268 (holding that
a registration for “electronic transmission of data and
documents via computer terminals” is “closely related” to
a registration “covering facsimile machines, computers,
and computer software”). That is not the case here. 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.” Shen Mfg.,
393 F.3d at 1244. It is for this reason that this court, in
Coors, reversed a Board determination that there was
likelihood of confusion between a registered mark for
“BLUE MOON” for restaurant services and an application
for “BLUE MOON” for beer. 343 F.3d at 1340. Coors
explained that the fact that “some restaurants sell private
label beer” does not alone imply that consumers will
IN RE: ST. HELENA HOSPITAL 11
assume that beer served in a restaurant has the same
source of origin as the restaurant services. Id. at 1345–
46. “Something more” was required to show relatedness
in the circumstances of that case. While we have applied
the “something more” standard in the past in the context
of restaurant services, the rule is not so limited and has
application whenever the relatedness of the goods and
services is not evident, well-known or generally recog-
nized.
In this case, the PTO has not shown that St. Helena’s
services and the ’657 Registration’s printed materials are
generally recognized as being related, nor has it shown
“something more” to establish relatedness in the circum-
stances of this case. The Board’s conclusion that St.
Helena’s services “are related” to registrant’s goods, St.
Helena, 2013 WL 5407267, at *4, thus lacks substantial
evidence.
c. Similarity or Dissimilarity of Established, Likely-to-
Continue Channels of Trade
The Board rejected St. Helena’s argument that the
registered goods would be limited to educators, because
the registrations did not limit the channels of trade. St.
Helena, 2013 WL 5407267, at *5. Accordingly, it found
that “the identified goods are offered in all channels of
trade which would be normal therefor.” Id. The Board
did not separately state whether the factor of the chan-
nels of trade thus suggested a likelihood of confusion or
was merely neutral. See id. at *3–5.
St. Helena argues that the trade channels are differ-
ent. It contends that because the registration describes
the relevant goods or services as “printed manuals, post-
ers, stickers, activity cards and educational worksheets
dealing with physical activity and physical fitness,” the
relevant trade channel is limited to educators. The PTO
replies that “educational” modifies only “worksheets” and
the printed manuals, posters, stickers and activity cards
12 IN RE: ST. HELENA HOSPITAL
are intended for non-educators as well. The PTO further
argues that St. Helena’s service includes an educational
component, and thus would still share trade channels,
even if the cited registration’s goods were directed only to
educators. Finally, the PTO argues that “the specimens
of use in the record reflect that both St. Helena’s services
and the registrant’s goods are promoted through similar
channels, such as websites generally searchable and
available on the Internet.”
Both sides’ evidence regarding the channels of trade is
lacking. St. Helena’s argument that the goods of the cited
registration are directed to educators rests on a false
premise. While some of the registration’s listed goods
may be directed to educators, the PTO is correct that not
all of the goods are so limited. The PTO goes too far,
however, in claiming that because both St. Helena’s
services and the registrant’s goods are promoted through
websites, the channels of trade are similar. Advertising
on the Internet is ubiquitous and “proves little, if any-
thing, about the likelihood that consumers will confuse
similar marks used on such goods or services.” Kinbook,
LLC v. Microsoft Corp., 866 F. Supp. 2d 453, 470–71 n.14
(E.D. Pa. 2012) (quoting J. Thomas McCarthy, McCarthy
on Trademarks and Unfair Competition § 24:53.50 (4th
ed. Supp. 2011)).
d. Degree of Consumer Care
The Board conceded that customers of St. Helena’s
services “will exercise a high degree of care.” St. Helena,
2013 WL 5407267, at *5. However, the Board found no
basis to conclude that the consumers would exercise that
level of care in analyzing printed materials received while
participating in the services. Id. The Board thus consid-
ered the factor of consumer care to be neutral.
St. Helena argues that the Board erred in assuming
that St. Helena’s consumers would become less discrimi-
nating once in the program. St. Helena contends that on
IN RE: ST. HELENA HOSPITAL 13
the contrary, given that its customers are immersed in a
hospital-based residential program, the consumers are
likely to become more familiar with St. Helena’s mark
and less likely to confuse it with the registrant’s mark.
The PTO responds that the Board properly concluded that
evidence of consumer care in selecting St. Helena’s ser-
vices is distinct from evidence of the degree of care con-
sumers would exercise once in the program.
The Board’s conclusion here is not supported by sub-
stantial evidence. The record contains no evidence to
support a conclusion that the level of care exercised by
consumers before entering a health-care program is any
different from the level of care exercised once in the
program. The Board’s conclusory and unsupported sup-
position to the contrary merits no deference. See Nat’l
Shooting Sports Found., 716 F.3d at 214 (quoting McDon-
nell Douglas Corp., 375 F.3d at 1187). Accordingly, the
Board’s determination that the factor of consumer care is
neutral lacked substantial evidence.
e. Balancing the Factors
While we agree with the Board’s assessment of the re-
spective marks themselves, substantial evidence does not
support the PTO’s refusal to register based on the ’657
Registration, given the dissimilarities in the respective
services and goods and the high degree of consumer care.
Thus, the Board’s affirmance of the PTO’s refusal to
register under 15 U.S.C. § 1052(d) cannot be sustained.
CONCLUSION
For the foregoing reasons, we reverse the Board’s re-
fusal to register under 15 U.S.C. § 1052(d) and remand for
further proceedings consistent with this opinion.
REVERSED AND REMANDED