Take10 vs. TakeTen – Court Approves Both Trademark Registrations

The Federal Circuit overturned the Trademark Trial and Appeal Board’s affirmation of the refusal to register “TAKETEN” as likely to cause confusion with “TAKE10.” The Court, in the matter In re St. Helena, 2014-1009 Fed. Circuit, ultimately found that there were dissimilarities in the respective goods and services and a high degree of consumer care which did not support a refusal to register the mark “TAKETEN.” (available here).

St. Helena applied for “TAKETEN” in respect of “health 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 conducts a 10-day residential health improvement program at its in-patient facility. “TAKETEN” was refused registration on the basis of a likelihood of confusion with “TAKE10” for “printed manuals, posters, stickers, activity cards, and educational worksheets dealing with physical activity and physical fitness” in class 16 and “pre-recorded videocassettes featuring physical activity and physical fitness promotion programs” in class 9.

The Court found that there was substantial evidence supporting the Board’s conclusion that the first factor, the similarity or dissimilarity of the marks, pointed toward a likelihood of confusion. However, the Court found that the PTO had not shown that the goods and services were similar, namely, that St. Helena’s in-hospital series and the TAKE10 printed materials were generally recognized as being related, nor had the PTO shown something more to establish relatedness in the circumstances of this case. The Board had asserted that printed materials distributed as part of a weight loss program will bear that the same mark or name as the facility offering the program. The Court determined that the Board’s assertion was conclusory and unsupported. The mere fact that goods and services are used together does not on its own, show relatedness. Where relatedness of the goods and services is less evident, the PTO will need to show something more than the mere fact that the goods and services are used together. The Court found a lack of substantial evidence in the Board’s determination that the factor of consumer care (how consumers select one good or service, compared to another good or service, carrying similar marks) was neutral. The Board had taken the position that consumers would become less discriminating once in the program; however, the Court found no evidence to support such a conclusion. The Court determined that the consumers would retain a high degree of consumer care. Accordingly, the Court determined that the PTO’s refusal to register “TAKETEN” cannot be sustained.

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