Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE AMERICOR HEALTH SERVICES
Serial No. 499,117
October 30, 1986
James L. Kurtz, P.C. for Americor Health Services
Before Allen, Rooney and Krugman
Opinion by Krugman
An application has been filed by Americor Health Services to register the term 'RESOLVE' as a service mark for corporate employee assistance services, namely, providing confidential mental health counseling services to employees of corporations and their family members. [FN1]
Registration has been refused under Section 2(d) of the Trademark Act on the ground that applicant's mark so resembles the previously registered mark 'RESOLVE' for counseling services in the field of infertility [FN2] as to be likely, when applied to applicant's services, to cause confusion, mistake or to deceive. It is the Examining Attorney's position that the marks are strong; that they are identical and that the services comprise related counseling services which could be encountered by the same people under circumstances suggesting a common source.
Applicant has appealed, asserting that the services are distinguishable and unrelated to each other; that infertility is generally caused by physical problems, not mental ones, and the mental health counseling field would not encompass the narrower field of infertility counseling; that infertility counseling services are offered to only a small number of people who would avail themselves of such services only after significant evaluation of the services, including the source or origin of the services; that applicant's services are offered by corporations to their employees through corporate sponsorship and said employees are unlikely to assume that the mental health counseling service offered through their employer is sponsored or affiliated with infertility counseling services and that the claim by the Examining Attorney that the marks are strong is unsupported by the record. Applicant argues that the term 'RESOLVE' is a common word having several different meanings and the meanings applicable to the respective services are quite different. Applicant contends that, with respect to infertility counseling services, the word is a noun meaning 'determination' while, with respect to applicant's mental health counseling services, the word is a verb meaning 'to solve.' Applicant concludes that these meanings are significantly different and are recognizable as such to the prospective purchasers of the services involved herein.
Turning first to the respective services, applicant's services are broadly defined to encompass mental health counseling services of all types. Applicant's promotional material, submitted as specimens of use, state that its counselors have a wide range of professional counseling experience. Applicant notes in the specimens that personal problems inevitably surface at the workplace, whether these problems are family, financial, emotional or alcohol related and that applicant's 'RESOLVE' is one of the most comprehensive and innovative employee assistance programs available. While applicant's marketing is directed to employers and while the recitation of services is restricted to corporate employees and their family members, it is clear that the recipients of applicant's services comprise a universe which includes all people who happen to work for a corporation, as well as their family members. This would encompass a wide cross section of people in a corporate environment ranging from the highest-paid executive to the lowest-paid messenger and any and all employees or family members utilizing the services would be exposed to the 'RESOLVE' mark. [FN3]
*2 The services encompassed in the cited registration are directed to individuals having problems with respect to infertility. These individuals could very well be corporate employees covered by their employer's mental health counseling services rendered under the 'RESOLVE' mark or family members of said employees. While applicant has attempted to characterize infertility as a physical problem and has stated that mental health is almost never the cause of infertility, there is no support in the record for such a conclusion. More to the point, even assuming that applicant's conclusion as to the cause of infertility is correct, there can be no serious argument with the proposition that the physical condition of being infertile can have emotional and psychological ramifications that can lead to a variety of emotional problems. We believe that counseling services in the field of infertility necessarily include and encompass counseling services designed to deal with the emotional ramifications caused by one's infertility. We believe that individuals familiar with these counseling services rendered under the 'RESOLVE' mark would, upon encountering an employer-sponsored comprehensive mental health counseling services program rendered under the identical 'RESOLVE' mark, be likely to ascribe a common origin to those services or to mistakenly believe that they were somehow associated with the same source.
With respect to applicant's argument that the respective recipients of the services are sophisticated purchasers who carefully investigate the source of the services, there is no support for such a conclusion. On the contrary, the problem of infertility cuts across social and economic classes in society and affects the unsophisticated as well as the sophisticated. Similarly, the potential recipients of applicant's services are corporate employees at all job levels, and their family members. Moreover, we note that, in any event, even sophisticated purchasers may not be particularly sophisticated concerning trademarks or service marks and would likely be confused when related services are offered under the identical marks.
Finally, while applicant argues that the mark 'RESOLVE' connotes different meanings as applied to the respective services, that is, as a verb meaning 'to solve' or as a noun meaning 'determination,' we believe that these meanings are equally applicable to both applicant's services and those covered by the cited registation. We disagree with applicant that potential recipients of the services would ascribe one meaning to the word as used in connection with applicant's services and another in connection with registrant's services and we note the absence of any evidence for such a conclusion.
Under the circumstances, we find the services to be sufficiently related to each other such that their marketing under identical service marks would be likely to cause confusion.
Decision: The refusal of registration is affirmed.
D. B. Allen
L. E. Rooney
G. D. Krugman
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 499,117 filed September 13, 1984.
FN2. Registration No. 1,231,504 issued March 15, 1983.
FN3. Applicant, in its advertisement specimen, stresses the confidentiality of its counseling services by noting that interviews with employees are held in 'RESOLVE' offices.