Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 HUMANA INC.
June 11, 1987
Hearing: February 10, 1987
Opposition No. 71,097, to application Serial No. 480,535, filed May 15, 1984.
Berman, Aisenberg & Platt for Humana Inc.
Laurence R. Brown and James F. Browne for Humanomics, Inc.
Before Rice, Allen and Simms
Humanomics, Inc. has applied to register the term HUMANOMICS as a service mark for use in the 'administration of health insurance programs for others.' In its application, Humanomics has alleged first use of its mark since June 23, 1983.
Humana Inc. has opposed registration, alleging ownership and prior use of the registered marks HUMANA [FN1] and HUMANA (stylized [FN2] in connection with 'hospital and health care services;' ownership and use since July 20, 1982 of the registered mark HUMANA CARE [FN3] in connection with 'educational services--namely, conducting workshops in the field of interpersonal communications;' and ownership and use since September 29, 1983 of the registered mark depicted below (hereinafter, HUMANA CARE PLUS & Des.) for 'underwriting insurance for health care services and developing comprehensive health care insurance programs for others' and 'hospital and health care services'; [FN4] that it owns a family of marks
in the field of health care services incorporating the house mark HUMANA; that the house mark HUMANA has become famous and well known in the United States for health care services; that it has previously used 'Humana' as a trade name in connection with hospital and health care services; and that the mark HUMANOMICS so resembles the mark and trade name of opposer as to be likely, when applied to applicant's services, to cause confusion, to cause mistake, and to deceive. In its answer, applicant has denied all of the allegations of the opposition. [FN5]
The record comprises the file of the opposed application; portions of Humana's 1983 and 1984 annual reports and copies of twelve third-party registrations and application drawings of marks comprising in part the term 'Human', introduced with applicant's notice of reliance; [FN6] certified status copies of opposer's four pleaded registrations, supra, notes 1 to 4, showing title in opposer and applicant's revised answers to certain of opposer's interrogatories, submitted with opposer's notice of reliance; and trial testimony (including exhibits) on behalf of both parties. Both parties have filed briefs and both participated in oral argument of the issues at a hearing held for this purpose.
Applicant's arguments to the contrary notwithstanding, since applicant has not counterclaimed to cancel any of the four registrations relied upon by opposer, priority is not an issue as to any of the registered marks. King Candy Co. v. Eunice King's Kitchen, 496 F.2d 1400, 182 USPQ 108 (CCPA 1974); Lexicon, Inc. v. Lexicon Music, Inc., 225 USPQ 201, 205 (TTAB 1985), and cases cited therein. Accordingly, applicant's claim of rights in HUMANOMICS prior to those of opposer in HUMANA CARE PLUS & Des. in respect of health insurance services involves an attack on the validity of opposer's registration of the mark which, absent a counterclaim or petition to cancel, cannot be entertained. Id, 225 USPQ at 205; see also, Arby's, Inc. v. Abby's Pizza Inns, 205 USPQ 762, 765 (TTAB, 1980). Applicant's argument that it could not have petitioned to cancel because its allegations of likelihood of confusion and damage in such a petition would have been inconsistent with its position here that HUMANOMICS and HUMANA CARE PLUS are not confusingly similar is not well founded. In these circumstances, applicant could have raised the priority issue in a counterclaim by pleading likelihood of confusion hypothetically, nothwithstanding the inconsistency of that pleading with its position in the opposition. FED. R. CIV. P. 8(e)(2) (1985); see, Home Juice Company v. Runglin Companies Inc., 231 USPQ 897 (TTAB 1986). Damage in such a case is assumed provided the statutory facts are proved. Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
*2 Opposer's trade name use is not, obviously, entitled to the above presumptions. However, the record before us clearly demonstrates prior and continuous use of the trade name 'Human' a in association with opposer's hospital and health care business.
Accordingly the only issue before us is whether applicant's continued use of HUMANOMICS, the mark subject of the opposed application, applied to the administration of health insurance programs for others is likely to result in source confusion, mistake or deception in view of opposer's marks HUMANA, HUMANA CARE and HUMANA CARE PLUS and opposer's trade name 'Humana' in connection with hospital, health care, educational and health insurance services. We conclude that confusion is likely and sustain the opposition on that ground. Our analysis of the relevant factors follows.
(i) Similarity of the Services and Their Channels of Trade
The considerable debate in the briefs concerning particular differences between the health insurance services rendered by applicant and those rendered by opposer need not be resolved. When evaluating the likelihood of confusion in proceedings concerning the registrability of marks, we must consider the identification of services set forth in the relevant application and registration(s), regardless of what the record may show as to the particular nature of the parties' respective services, their actual channels of trade, or the class of purchasers to which their sale is, in fact, directed. Miles Laboratories, Inc. v. Naturally Vitamin Supplements, Inc., 1 USPQ 2d 1445, 1450 (TTAB 1986), and cases cited therein. In the case before us, there is no doubt that the description 'underwriting insurance for health care services and developing comprehensive health care insurance programs for others' entirely encompasses 'administration of health insurance programs for others.' As the evidence shows, it is common practice for health insurance underwriters to process claims under their own policies, e.g. 'Blue Cross/Blue Shield.' Therefore, that opposer once contracted out administration of claims to Equitable Life Insurance Company is irrelevant. Indeed, applicant's president conceded the point when he testified that Humanomics 'serves or provides similar service to what the Equitable apparently provided to Humana Care Plus during 1983 and 1984.' (Dobell transcript, 36.) Accordingly, we must consider the services in respect of which HUMANOMICS and HUMANA CARE PLUS are used to be legally identical. By the same analysis, also corroborated by the evidence, the channels of trade for the respective parties' services are the same. In fact, both parties render their services to employers and labor unions and both parites' marks are also used on materials directed to the client employers' employees and the labor unions' members.
We also conclude, based on the record before us, that the services in respect of which HUMANOMICS is sought to be registered are well within the natural scope of expansion of opposer's hospital and health care services, rendered under the HUMANA house mark and trade name. In determining possible expansion, it is the ordinary purchaser's perception that counts. 2 T.J. McCarthy TRADEMARKS AND UNFAIR COMPETITION § 24:5, at note 4 (2d ed. 1984). Thus, application of the doctrine is strictly limited to those cases wherein the expansion, whether actual or potential, is natural, i.e. where the goods or services of the subsequent user, on the one hand, and the goods or services as to which the first user has prior use, on the other, are of such nature that purchasers would generally expect them to emanate from the same source. J. Wiss & Sons Co. v. W. E. Bassett Co., 462 F.2d 567, 174 USPQ 331 (CCPA 1972); Mason Engineering and Designing Corp. v. Mateson Chemical Corp., 225 USPQ 958, 962 (TTAB 1985). The reason for the limitation is that the prior user of a mark on particular goods or services cannot extend its use of the mark to distinctly different goods or services if the result could be a conflict with intervening rights established by another through extensive use and/or registration of the same or similar mark for the same or closely related goods or services in the new sphere of trade. Id; see also, Electronic Realty Associates, Inc. v. Extra Risk Associates, Inc., 217 USPQ 810, 815 (USPQ 1982). On the other hand, the expansion of the business of a prior user, even if under a different mark, may be accorded corroborative weight in a proceeding nothwithstanding that it may have occurred subsequently to that of the other party if the goods or services of the new line are of such a nature that the expansion would have been natural on a date prior to the other party's entry. Porta-Tool, Inc. v. DND Corp., 196 USPQ 643, 651 (TTAB 1977), and cases cited therein.
*3 In the case before us, that ordinary persons having previously used or heard about HUMANA health care services might easily believe that the same mark, or a variation thereof, used on health insurance services, represented an expansion of opposer into the latter field is clear based on the relatedness of hospital and health care and health insurance services, particularly in that the classes of customers are the same and the know-how in the former fields is a significant factor in the latter. Thus, persons needing health care are obviously potential subscribers to a health insurance plan and a very important requirement for effective health insurance claim administration is knowledge of hospital and health care costs. That the expansion was natural is corroborated by the fact that opposer has, in fact, moved from offering various health insurance services to its own employees sometime in the early seventies [FN7] to the launching of its prepaid health care insurance and health maintenance organization (HMO) services to others under the HUMANA CARE PLUS mark in 1983.
(ii) The Circumstances of Sale
Both parties' operations involve contacts with purchasers at two levels. At the first level are the benefits managers or owners of prospective client companies of the complete health care insurance services of opposer and of the health care insurance administrative services of applicant. At the second level are the individual subscribers (including family members). It is clear that the respective marks HUMANOMICS and HUMANA CARE PLUS are used in connection with the services in ways which involve contact with purchasers at both levels. Consequently, while benefits managers might be considered to be careful purchasers of the respective services, the subscribers at the second level of contact are ordinary persons of diverse backgrounds and levels of expertise. Accordingly, no special standard of care is applicable to the confusion issue.
(iii) The Fame of the Prior Mark
On the record before us, there is no question that HUMANA is a famous mark in the field of hospital and health care services. Applicant does not seriously dispute the point.
(iv) Third-party Use
There is no evidence of third-party use and the only probative value of the third-party registrations introduced by applicant here, absent a showing that the marks subject of the third party registrations are in use, is to show the meaning of a mark, or of a portion thereof, in the same way dictionaries are used. Bottega Veneta, Inc. v. Volume Shoe Corp., 226 USPQ 964, 968 (TTAB 1985), and cases cited therein. In the case before us, the meaning of the word 'human' is well known without the necessity of any evidence and has no meaning in relation to opposer's services that renders the HUMANA marks inherently weak. Even were we to conclude otherwise, the fame acquired as a result of extensive sales, advertising and publicity supporting the HUMANA mark has beyond question overcome any weakness that might be deemed to exist. See, Specialty Brands, Inc. v. Coffee Bean Distributors, 748 F.2d 669 223 USPQ 1281 (Fed. Cir. 1984).
(v) Similarity of the Marks
*4 It seems to us that, considering the fame of opposer's mark, HUMANA, the similarity of HUMANOMICS and HUMANA in terms of the marks' overall commercial impressions so far outweigh the differences that confusion is likely. It may be, as applicant argues, that applicant's mark has the imagery of 'economics' because of the 'omics' suffix, but the dominant impression is unquestionably that which is conveyed by the word 'human, i.e., that the services concern human needs. This is best illustrated by applicant's own brochures which prominently feature the theme of humanizing insurance services. [FN8] In contrast, the only place where an association of the term 'economics' with applicant's mark is found is in its counsel's brief. More significantly, even were we to conclude that applicant's mark conveys the dual imagery of human care and economics, we would nevertheless, find that persons encountering applicant's mark for the first time might easily believe that the services rendered under it were companion health insurance services offered by Humana, Inc., especially designed to be economical in terms of their cost. (It is common knowledge that many health insurance companies offer multiple plans which vary in terms of the level of benefits and premiums.) The fact that Humana has itself used variations of its house mark by adding matter to it, e.g., HUMAN CARE and HUMANA CARE PLUS, increases the likelihood that HUMANOMICS would be perceived as another variation.
We do not consider the above to be a 'family of marks' result, as it does not seem to us one of the requirements of a family argument, i.e., that the alleged family surname be recognized as a trademark in and of itself has been proved. [FN9] See, 2 T.J. McCarthy, supra, § 23:19, at note 12. However, the point is also relevant even where a family of marks has not been proved. See, e.g., Varian Associates, Inc. v. Leybold-Heraeus G.m.B.H., 219 USPQ 829, 833 (TTAB 1983) [Use of trade name and house mark VARIAN in close association with other marks incorporating the term 'vac', e.g. VACION, VACSORB and EVAC, accorded considerable weight in Board's conclusion that applicant's VAROVAC used for the same goods is likely to be associated with opposer].
We also conclude that HUMANOMICS and HUMANA CARE PLUS are likely to be confused when applied, as they are, to identical services. In reaching this conclusion, we invoke the well-established principle that where goods or services are identical and travel through the same channels of trade to the same class of end users, the degree of similarity of marks is less than that otherwise required in situations where the goods or services are dissimilar or noncompeting. E.g., Jules Bermans & Associates, Inc. v. Consolidated Distilled Products, Inc., 202 USPQ 67 (TTAB 1979).
Considering all of the above factors, we conclude that the continued use of HUMANOMICS in connection with the services set forth in the opposed application is likely to result in source confusion.
*5 Decision: The opposition is sustained and registration to applicant is refused.
J. E. Rice
D. B. Allen
R. L. Simms
Members, Trademark Trial and Appeal Board
FN1. Registration No. 1,305,479, issued November 13, 1984.
FN2. Registration No. 1,304,266, issued November 6, 1984. The mark is depicted below:
It should be noted that the lining is a feature of the mark and does not indicate color.
FN3. Registration No. 1,310,460, issued December 18, 1984. The word 'Care' is disclaimed.
FN4. Registration No. 1,304,105, issued November 6, 1984.
FN5. Under the heading 'Affirmative Defenses,' applicant has set forth allegations which are in the nature of arguments in support of its denial of opposer's likelihood of confusion claims, rather than affirmative defenses, and they will be so treated.
FN6. The annual report excerpts are superfluous since the complete reports are already in the record as Opposer's exhibits 12 and 13. Once introduced, documentary exhibits may be used by either party for any relevant purpose.
FN7. Applicant contends that opposer's evidence does not support this history because opposer's collective exhibit 0-40 (pamphlets of the various plans) bear the date 3/84, indicating they were perhaps not offered until March 1984. We do not agree. Opposer's witness Shiprek satisfactorily explained that the 1984 date indicates the date of a revision of the pamphlets and he testified credibly that the HUMANA employee plans had been in existence for many years, some since 1973. (Shiprek deposition, 18-20.)
FN8. See, exhibits A-24 and A-25. Pictorially, this theme is carried out by an abstract statue of a nude human figure and by the slogan: 'In the never ending search to humanize insurance services, lower costs and maximize cash flow, HUMANOMICS presents the promise of the future, here today." (Emphasis added.)
FN9. Opposer seems not even certain what the 'surname' of its alleged family is, having pled it was HUMANA but argued, brief, 18, it is HUMAN.