In re: St. Helena Hosp., No. 14-1009 (Fed. Cir. 2014)Annotate this Case
St. Helena conducts a 10-day residential health improvement program at its California in-patient facility. St. Helena applied to the U.S. Patent and Trademark Office to register the mark “TAKETEN,” identifying 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. The examiner refused to register the mark, citing likelihood of confusion with the “TAKE 10!” mark shown in the 657 Registration and commonly owned U.S. Registration 182 for the mark “TAKE 10! (and Design). Both cited registrations are for “printed manuals, posters, stickers, activity cards and educational worksheets dealing with physical activity and physical fitness” in class 16. The registration for “TAKE 10! (and Design)” also identifies goods in class 9: “pre-recorded videocassettes featuring physical activity and physical fitness promotion programs.” The Trademark Trial and Appeal Board affirmed under 15 U.S.C. 1052(d). The Federal Circuit reversed, agreeing with the Board’s assessment of the respective marks themselves, but holding that substantial evidence did not support the denial based on the 657 Registration, given the dissimilarities in the respective services and goods and the high degree of consumer care.