IP Law Daily, TRADEMARK—TTAB: CLAIM WATCHER mark is not likely to be confused with CLAIM WATCH mark, (May 19, 2023)

By Kevin M. Finson, J.D.

The applicant’s health benefit plan services were not related to the registrant’s services for tracking insurance claims for business purposes.

The proposed mark CLAIM WATCHER was not likely to be confused with a registered design mark incorporating the words CLAIM WATCH, the Trademark Trial and Appeal Board has held. Although the marks were similar, confusion was not likely because the marks were not used with related goods. There is “a distinct difference between tracking and monitoring the status of a claim and assisting others in the repricing of health insurance claims,” the Board said (In re: Homestead Strategic Holdings, Inc., May 17, 2023, Zervas, A.).

Homestead Strategic Holdings, Inc. (Homestead) sought registration on the Principal Register for the standard character mark CLAIM WATCHER, with WATCHER disclaimed, for use with health benefit plan services and related services in International Class 36 and a variety of legal services in International Class 45. The Examining Attorney refused registration on the ground that the applied for mark was likely to be confused with a registered design mark containing the words CLAIM WATCH and a stylized “P” inside a shield drawing for use with “[t]racking and monitoring the status of insurance claims for business purposes” in International Class 35. Homestead appealed.

The Trademark Trial and Appeal Board considered the DuPont factors for which there was evidence of record.

Similarity of the marks. Homestead argued that the design elements of the registered mark and large stylized “P,” which represented the name of the founder of the registrant company, distinguished the marks.

The Board found, however, that the CLAIM WATCH words were the dominant portion of the cited mark and similar to the cited CLAIM WATCHER mark, especially since both marks would be verbalized the same and carried the same connotation of the close observation of a claim because the word “watch” means “to keep someone or something under close observation,” and the word “watcher” means “a person who closely follows or observes someone or something.” This factor weighed in favor of a likelihood of confusion.

Similarity of the services. The Examining Attorney submitted several pieces of website evidence purporting to show the applicant’s and registrant’s services being sold under the same mark from the same source.

The Board found, however, that none of the examples matched both sets of services. The Board further found that while both sets of services were part of the very broad and complex world of insurance, there was not sufficient evidence in the record to support a finding that they were of a kind which purchasers would expect to emanate from the same source. There is “a distinct difference between tracking and monitoring the status of a claim and assisting others in the repricing of health insurance claims,” the Board said. “Moreover, the limiting language ‘for business purposes’ further narrows the registrant’s services to encompass only those ‘insurance claims’ submitted for business purposes’ and the registrant’s ‘tracking and monitoring’ of the ‘status’ of such claims.”

This factor weighed against a finding of confusion and outweighed the similarity of marks factor. The Board reversed the refusal to register.

The Case is Serial No. 90263580.

Attorneys: Jaime Batt for the USPTO. Donna A. Tobin (Royer Cooper Cohen Braunfeld LLC) for Homestead Strategic Holdings, Inc.

Companies: Homestead Strategic Holdings, Inc.

Cases: Trademark USPTO