Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 BLUE CROSS AND BLUE SHIELD ASSOCIATION
HARVARD COMMUNITY HEALTH PLAN, INC.
Opposition No. 78,270
July 17, 1990
Before Rice, Simms, and Hanak
Opinion by Hanak
There are currently pending a motion by Blue Cross and Blue Shield Association (opposer) to amend its Notice of Opposition, [FN1] and motions by opposer and Harvard Community Health Plan, Inc. (applicant) seeking summary judgment.
Considering first the summary judgment motions, we note that both parties seek judgment in their favor on the Section 2(d) claim, as well as on the claims sought to be added by opposer in its motion to amend, namely, the Section 2(a) claims (false suggestion and disparagement) and the abandonment claim. The resolution of Board proceedings by means of summary judgment is to be encouraged. Sweats Fashions v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1795 (Fed.Cir.1987). This is particularly true when both parties request summary judgment. Phoenix Closures v. Yen Shaing Corp., 9 USPQ2d 1891, 1892 (TTAB 1988).
With regard to the Section 2(d) claim (likelihood of confusion), there is no dispute that before applicant adopted in May 1987 the mark THE CURE FOR THE BLUES for health care services, opposer had used and registered the marks BLUE CROSS and BLUE SHIELD for similar services. Applicant concedes that the marks BLUE CROSS and BLUE SHIELD are famous. (Applicant's brief dated May 1, 1990, page 4). Moreover, before applicant first used THE CURE FOR THE BLUES, opposer had used, for similar health care services, the marks THE BLUES [FN2]; THE BLUE MAX [FN3]; and TRUE BLUE. [FN4]
Indeed, applicant readily concedes that when it selected its slogan mark THE CURE FOR THE BLUES, it did so with the intention that the reference to THE BLUES in its slogan mark would be understood by health care consumers as referring, in one sense, to Blue Cross and Blue Shield (THE BLUES), and in another sense, to a depressed or unhappy feeling (THE BLUES). [FN5]
Applicant argues that its purpose in mentioning opposer (THE BLUES) in its slogan service mark was not to create confusion with opposer, but rather "to distinguish itself from and provide an alternative to traditional Blue Cross." (Applicant's brief dated May 1, 1990, page 5). Applicant contends that confusion is not likely because "in each and every one of those [applicant's] ads, Harvard's [applicant's] name appears immediately above the language 'The Cure for the Blues' and is mentioned by name as the source of the service being advertised." (Applicant's brief dated May 1, 1990, page 5). [FN6]
The problem that we have with applicant's argument is that applicant is not seeking to register a service mark slogan containing its trade name, such as, for example, "HARVARD COMMUNITY HEALTH PLAN. THE CURE FOR THE BLUES." Rather, applicant seeks to register the slogan service mark THE CURE FOR THE BLUES per se. It need hardly be said that "in determining the applicant's right to registration, only the mark as set forth in the application may be considered; whether or not the mark is used with an associated house mark is not controlling." Frances Denney v. Elizabeth Arden Sales Corp., 263 F.2d 347, 120 USPQ 480, 481 (CCPA 1959); Wisconsin Hist. Society v. Ringling Bros.- Barnum & Bailey, 190 USPQ 25, 29 n. 3 (TTAB 1976) (opposer's trade name or mark CIRCUS WORLD MUSEUM and applicant's applied for mark CIRCUS WORLD held confusingly similar despite the fact that applicant's actual use of CIRCUS WORLD was in conjunction with its house mark "Ringling Bros.-Barnum & Bailey"); Smith v. Tobacco By-Products & Chemical Corp., 243 F.2d 188, 113 USPQ 339, 341 (CCPA 1957); J. McCarthy, Trademarks and Unfair Competition, Section 20:4 at page 1024 (Volume 1) and Section 23:18 at page 102 (Volume 2) (2d ed. 1984).
*2 Thus, even if we assume for the sake of argument that applicant's past actual use of "HARVARD COMMUNITY HEALTH PLAN. THE CURE FOR THE BLUES" in ads which distinguished Harvard Community Health from Blue Cross/Blue Shield did not create a likelihood of confusion, we are not persuaded that the use of simply THE CURE FOR THE BLUES for health care services would not create a likelihood of confusion vis-a-vis opposer's BLUE CROSS/BLUE SHIELD marks and trade names. A consumer seeing an ad for health care services which contained simply the slogan mark THE CURE FOR THE BLUES without mention of Harvard or Harvard Community Health Plan may assume that the ad is being run by opposer to convey the message that THE CURE FOR THE BLUES (i.e. a depressed, unhappy feeling) is a health care program from THE BLUES (i.e. opposer Blue Cross/Blue Shield). Indeed, opposer and its member plans have themselves utilized slogans containing the mark THE BLUES, such as THE NEW BLUES, WE'VE GOT THOSE FEELING SO GOOD TODAY BLUES, CHOOSE THE BLUES, NOTHING ELSE COVERS YOU LIKE BLUE, and THE SWING IS TO THE 'BLUES'!.
Accordingly, we find that there are no genuine issues of material fact relating to the issue of likelihood of confusion, and that the use of THE CURE FOR THE BLUES per se for applicant's health care services is likely to cause consumers to believe that the services originate with, are sponsored by or are somehow associated with opposer Blue Cross/Blue Shield. While proof of actual confusion is not a prerequisite to a finding of a likelihood of confusion, we have in this matter the luxury of numerous instances of actual confusion involving the slogan THE CURE FOR THE BLUES to buttress our conclusion. Those instances of actual confusion are contained within a study conducted by applicant's own market research department entitled "Harvard Community Health Plan, Attitude and Awareness Study, Fall 1987." Applicant's employees conducted 800 telephone interviews between September 23 and October 3, 1987 in the greater Boston area (part of applicant's market area). Two of the objectives of the study were to "measure consumer awareness of [applicant's] advertising" and to "test consumer recall of [applicant's] advertising messages." (Page 4 of the study). One issue considered was "consumer attitudes towards [applicant] and BC/BS." (Page 4 of the study). A pertinent finding of the study was set forth at page 15: "Aided recall of seven advertising slogans revealed 'Cure for the Blues' and 'Still the Best' [a BC/BS slogan] to be the most recognized slogans. Twenty-Seven percent of respondents aware of [applicant] recognized 'Cure for the Blues' as the [applicant's] slogan and 25% recognized 'Still the Best' as a BC/BS slogan. Fourteen percent of respondents said 'Cure for the Blues' was a BC/BS slogan." Thus, applicant's own study reveals numerous instances of actual confusion where individuals, who presumably saw and heard ads featuring THE CURE FOR THE BLUES wherein applicant's trade name Harvard Community Health appeared, nevertheless though that this slogan mark belonged to Blue Cross/Blue Shield. Had applicant's advertising campaign paralleled applicant's application drawing in featuring simply the slogan mark THE CURE FOR THE BLUES per se, the study may have revealed far more instances of actual confusion. [FN7]
*3 Inasmuch as we have found that applicant's slogan mark THE CURE FOR THE BLUES so resembles opposer's marks as to be likely to cause confusion [Section 2(d) ], we elect to consider neither opposer's motion to amend to add Section 2(a) and abandonment claims, nor the merits of opposer's Section 2(a) and abandonment claims. Cf. Sweetheart Plastics, Inc. v. Detroit Forming, Inc., 743 F.2d 1039, 223 USPQ 1291, 1296 n. 4 (4th Cir.1984); Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 207 USPQ 278, 288 n. 30 (5th Cir.1980); Goldring, Inc. v. Towncliffe, Inc., 234 F.2d 265, 110 USPQ 284, 285 (CCPA 1956).
Decision: The opposition is sustained and registration to applicant is refused.
J. E. Rice
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. In its initial Notice of Opposition, opposer alleged that it was the owner of the service marks and trade names BLUE CROSS, BLUE SHIELD, THE BLUES and other BLUE marks and names for health care services, and further alleged that the use by applicant of the mark THE CURE FOR THE BLUES for health care services "will injure opposer by causing the public to be confused, or mistaken or deceived into believing that the services of the applicant are services of the opposer ... or [are] endorsed or sponsored by the opposer or connected in some way to opposer's activities." (Notice of Opposition, Paragraph 19). While no specific mention was made of Section 2(d) of the Lanham Trademark Act, it is clear that the original Notice of Opposition is premised, at least in part, on that section. In addition, in the original Notice of Opposition opposer also alleged that "applicant selected the mark [THE CURE FOR THE BLUES] with intent to confuse, mislead ..." (Notice of Opposition, Paragraphs 17 and 18).
Two days before discovery was to close on February 28, 1990, opposer filed a motion to amend its Notice of Opposition "to make clear, for pleading purposes, that Blue Cross [opposer] opposes the registration of applicant's THE CURE FOR THE BLUES mark under Section 2(a), as well as Section 2(d)," and to set forth a claim that applicant had abandoned its mark THE CURE FOR THE BLUES. (Opposer's brief dated February 26, 1990, page 1). Opposer contends that discovery provided evidence corroborating its belief that applicant's mark THE CURE FOR THE BLUES "disparages or falsely suggests a connection between Harvard [applicant] and Blue Cross [opposer]," and that discovery revealed for the first time that "Harvard [applicant] was not then using THE CURE FOR THE BLUES mark in any of its advertising, and had no present intention of using the mark in the future." (Opposer's brief dated February 26, 1990, pages 3 and 4).
In opposing the motion to amend the Notice of Opposition, applicant does not contend that the motion is untimely nor does it contend that it would be "egregiously" prejudiced if the motion was granted. Rather, applicant rests its opposition on the basis that "the new claims of Blue Cross [opposer] are wholly lacking in merit." (Applicant's brief dated March 16, 1990, page 2).
FN2. Registration No. 1,454,610 issued August 25, 1987 with a claimed first use date of November 4, 1984.
FN3. Registration No. 986,193 issued June 11, 1974 with a claimed first use date of July 1971.
FN5. Applicant notes that "the double entendre of 'the Blues' " is carried in the sad look on the people's faces in [applicant's] advertisements." (Applicant's brief dated May 1, 1990, page 5).
FN6. See also page 35 of applicant's brief of May 1, 1990 which contains the following statement: "In each advertisement before this Tribunal on these cross-motions, the name and insignia of Harvard [applicant] appears in close proximity to 'The Cure for the Blues.' "
FN7. Applicant's argument that its own 1987 study is inadmissible as evidence in this summary judgment proceeding is not well founded. (Applicant's brief dated May 1, 1990 pages 30-33). Obviously, it can hardly be said that applicant's own study is biased against applicant, and indeed applicant does not contend that it is biased. Applicant's goal in conducting the study was to get an accurate measure of consumer awareness and recall of applicant's advertising, as well as to measure consumer attitudes towards applicant and Blue Cross/Blue Shield. See page 4 of the study. Thus, in conducting the study, applicant had every reason to make certain that it obtained honest responses which were accurately recorded. Even if we assume that applicant's study/survey--which was conducted for business purposes and not for litigation purposes--had certain defects which would preclude its admission as a survey on behalf of applicant itself, it nevertheless constitutes evidence of specific instances of actual confusion. 2 J. McCarthy, Trademarks and Unfair Competition, Section 32:54 at page 783 (2d ed. 1984) ("Survey results are generally classified as evidence of actual confusion ..."); Mushroom Makers, Inc. v. R.G. Barry Corp., 441 F.Supp. 1220, 196 USPQ 471, 481 (SDNY 1977), aff'd 580 F.2d 44, 199 USPQ 65 (2nd Cir.1978), cert. denied 439 U.S. 1116, 200 USPQ 832 (1979) ("... [E]ither a survey or an investigation [could have been undertaken] to establish instances of actual consumer confusion.") That is to say, even if applicant's own survey is considered to be deficient in the sense that it cannot be relied upon to accurately predict the degree of confusion in terms of percentages among the relevant universe, it nevertheless functions to show instances of actual confusion involving "qualified respondents," which applicant defines at page 2 of its study as those "between the ages of 18 and 54; heads of household; employed 30 hours or more per week; insured through their employer or bought their insurance directly from the insurance company; and a participant in their family's choice of health insurance."