Health New England, Inc.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: September 26, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Health New England, Inc.
_____

Serial No. 86871517
_____

Nicholas J. Tuccillo of Grogan, Tuccillo & Vanderleeden, LLP,
for Health New England, Inc.

Cynthia R. Smith, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.

_____

Before Kuczma, Lynch, and Coggins,
Administrative Trademark Judges.

Opinion by Coggins, Administrative Trademark Judge:

Health New England, Inc. (“Applicant”) seeks registration on the Principal

Register of the composite word and design mark

(with a claim of acquired distinctiveness as to HEALTH NEW ENGLAND) for

“underwriting insurance for prepaid health care” in International Class 36, and
Serial No. 86871517

“health care in the nature of health maintenance organizations” in International

Class 44.1

I. Evidentiary Issue

Applicant attached to its brief two screen shots of subpages from Applicant’s

website, neither of which had been submitted previously. See Brief, Exhibits A and B

(4 TTABVUE 5-8). The Examining Attorney objected to the new material. Examiner’s

Brief, unnumbered p. 3 (7 TTABVUE 4). Because the evidentiary record in an

application should be complete prior to the filing of an ex parte appeal to the Board,

the Examining Attorney’s objection to the website subpage evidence first submitted

with the appeal brief is sustained. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); In

re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A., 109 USPQ2d 1593, 1596 (TTAB 2014).

Accordingly, we give no consideration to the website subpage evidence submitted for

the first time with Applicant’s brief, or any arguments related thereto.

II. Background

Applicant initially based the application on its allegation of a bona fide intent to

use the mark in commerce; and, after a notice of allowance issued, Applicant filed a

1 Application Serial No. 86871517 filed on January 11, 2016, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide
intention to use the mark in commerce. The application contains the following description of
the mark: “The mark consists of two concave wings touching one another at opposing ends
forming an irregular oval to the left of the wording ‘HEALTH NEW ENGLAND’. To the right
is a vertical bar preceding the wording ‘BE HEALTHY’. Color is not claimed as a feature of
the mark.”

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Serial No. 86871517

statement of use with the specimen shown below (the “Original Specimen”)2 described

as a “website page”3:

The Trademark Examining Attorney refused registration under Sections 1 and 45

of the Trademark Act, 15 U.S.C. §§ 1051 and 1127, on the ground that the specimen

does not show the mark in use in commerce in connection with the Class 36 or 44

services specified in the Statement of Use because “the specimen makes no reference

to insurance underwriting or health maintenance organizations.”4 In response

thereto, Applicant made no argument nor provided any explanation, but submitted

2 March 22, 2018 Statement of Use at TSDR 5. All citations to TSDR are to the downloadable
.pdf version of the document.
3 Id. at TSDR 1.
4 April 11, 2018 Office Action at TSDR 2.

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Serial No. 86871517

the following substitute specimens (the “Substitute Specimens”)5 each described as a

“website page showing services”6:

5 April 16, 2018 Response to Office Action at TSDR 6-7.
6Id. at TSDR 1, 2. Although Applicant described each of these specimens as coming from a
website, the Examining Attorney characterized them as “a paper pamphlet and cover of an
online newsletter,” respectively. See Examiner’s Brief, unnumbered p. 4 (7 TTABVUE 5).
Based on the layout, content, and QR code, these appear to be print advertisements.

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Serial No. 86871517

The Examining Attorney rejected the substitute specimens and made final the

refusal under Sections 1 and 45 as to the services in both classes. Specifically, the

Examining Attorney explained that the substitute specimens “[do] not show proper

use of the . . . mark in commerce,” noted that the elements of the composite mark

appeared “spatially separated to such a degree that they each appear as separate and

distinct marks” on the Substitute Specimens, and concluded that “the mark in the

drawing is not a substantially exact representation of the mark on the specimen[s].”7

When the refusal was made final, Applicant appealed, requested reconsideration,

and submitted two additional specimens for each class, excerpted below (the

“Reconsideration Specimens”). For Class 44:8

&

7 April 26, 2018 Office Action at TSDR 2.
8 October 26, 2018 Request for Reconsideration at TSDR 9-10.

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Serial No. 86871517

Applicant argued that the Class 44 Reconsideration Specimens “show the mark in

close association with clickable links and information relating to . . . operation of

[Applicant’s] Health Maintenance Organization, as offered through [its] BEHealthy

Partnership program.”9 And for Class 36:10

&

Applicant argued that the Class 36 Reconsideration Specimens “are accessed

through” the first Class 44 specimen (above left), and “[a]lthough” the mark is “not

9 Id. at TSDR 1.
10 Id. at TSDR 7-8.

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Serial No. 86871517

present on” the Class 36 “specimens . . . directly, [Applicant’s] mark is reflected on

the [preceding] source page” (i.e., the first Class 44 specimen, above left) “where the

top-level links to [the Class 36] specimens . . . are located. Thus . . . customers would

. . . be presented with [Applicant’s] mark as a necessary stop to delving further into

the myriad of services offered by Applicant[], including the underwriting services

accessed via the ‘broker’ or ‘provider’ links, as shown in” the Class 44 Reconsideration

Specimens above.11

The Examining Attorney granted the request for reconsideration as to Class 44,

but denied the request as to Class 36, finding Applicant’s analysis and arguments

unpersuasive for Class 36 and that the “mark does not appear on the [Class 36

Reconsideration Specimens].”12 Thereafter, the appeal was resumed. As explained

below, we affirm the refusal to register for Class 36.

III. Applicable Law

“The Trademark Act ‘provides for registration of a mark based on use of the mark

in commerce.’” In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039, *12 (TTAB 2019)

(quoting In re Siny Corp., 920 F.3d 1331, 2019 USPQ2d 127099, *2 (Fed. Cir. 2019)).

Under Section 45 of the Trademark Act, 15 U.S.C. § 1127, a service mark is used in

commerce “when it is used or displayed in the sale or advertising of services.” “A

service mark specimen must show the mark as used in the sale or advertising of the

services.” Trademark Rule 2.56(b)(2), 37 C.F.R. § 2.56(b)(2). An acceptable specimen

11 Id. at TSDR 1.
12 November 19, 2018 Request for Reconsideration Denied in Part at TSDR 1.

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Serial No. 86871517

must show “some direct association between the offer of services and the mark sought

to be registered therefor.” In re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ

456, 457 (CCPA 1973). “For specimens showing the mark in advertising the services,

‘[i]n order to create the required ‘direct association,’ the specimen must not only

contain a reference to the service, but also the mark must be used on the specimen to

identify the service and its source.’” In re WAY Media, Inc., 118 USPQ2d 1687 (TTAB

2016) (quoting In re Osmotica Holdings Corp., 95 USPQ2d 1666, 1668 (TTAB 2010)).

A specimen that shows “only the mark with no reference to, or association with, the

services does not show service mark usage.” In re Pitney Bowes, Inc., 125 USPQ2d

1417, 1419 (TTAB 2018).

“To determine whether a mark is used in connection with the services described

in the [statement of use], a key consideration is the perception of the user.” In re

JobDiva, Inc., 843 F.3d 936, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016). The evidence

is reviewed to determine whether use of the mark “‘sufficiently creates in the minds

of purchasers an association between the mark”’ and the applied-for services. Id.

(quoting In re Ancor Holdings LLC, 79 USPQ2d 1218, 1221 (TTAB 2006)). We may

consider an applicant’s explanations as to how the specimen is used, along with any

other available evidence in the record that shows how the mark is actually used. See

In re Cardio Grp., LLC, 2019 USPQ2d 227232, *2 (TTAB 2019) (“Both precedent and

examination guidance make clear that in assessing the specimens, consideration

must be given not only to the information provided by the specimen itself, but also to

any explanations offered by Applicant clarifying the nature, content, or context of use

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Serial No. 86871517

of the specimen that are consistent with what the specimen itself shows.”); In re Int’l

Envtl. Corp., 230 USPQ 688, 691 (TTAB 1986).

To assess whether the specimens of record make a direct association or reference

to the Class 36 services, we first look to the nature of the “underwriting insurance for

prepaid health care” services. Underwriting is “[t]he process of determining a person’s

insurability in terms of life, liability, home, and other insurance policies and whether

it will accept an application for insurance;”13 and “[i]nsurance: [e]valuate a risk to

assume the liability for specified future events and to match the risk with appropriate

rate of premium.”14 According to Applicant, “[a]s is readily understood by insurance

brokers for any type of insurance, selling insurance policies to any customer

necessarily involves submitting an application for coverage on behalf of such

customer, which is reviewed by an underwriter to determine whether the prospective

customer meets eligibility requirements, etc.”15

A. Original Specimen

The Examining Attorney argues that the Original Specimen, submitted March 22,

2018, “fails to directly reference any services” and characterizes “the manner in which

the mark is displayed” (i.e., prominently conveying that “Health New England Be

13THE FREE DICTIONARY, medical-dictionary.thefreedictionary.com/underwriting (accessed
September 24, 2019). The Board may take judicial notice of dictionary definitions, including
online dictionaries that exist in printed format. Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc.,
906 F.3d 965, 128 USPQ2d 1370, 1374 (Fed. Cir. 2018); In re Cordua Rests. LP, 110 USPQ2d
1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016).
14BUSINESS DICTIONARY, businessdictionary.com/definition/underwrite (accessed September
24, 2019).
15 4 TTABVUE 2-3.

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Serial No. 86871517

Healthy is becoming BeHealthy Partnership effective March 1, 2018”) as “inform[ing]

the consumer that [the mark] is no longer in use, or that the relevant services are no

longer provided under the mark.” Examiner’s Brief, unnumbered p. 4 (9 TTABVUE

5). Although Applicant does not mention the Original Specimen in its brief, and

therefore appears to concede that this specimen does not show use of the mark in

commerce for the Class 36 services, for completeness we review that specimen.

A broker is “one who acts as an intermediary: such as . . . an agent who negotiates

contracts of purchase and sale (as of real estate, commodities, or securities).”16 The

single word “brokers” on the Original Specimen does not indicate that Applicant

underwrites insurance for prepaid health care, and would not be perceived as a

reference to underwriting services. There is no reference to insurance services in

general or underwriting services specifically; and the jump from a one-word

occurrence of “brokers” to underwriting insurance for prepaid health care is

unsupported. The Original Specimen contains no reference that would create an

association between underwriting services and the mark, which appears only once on

this specimen and far removed from the “brokers” link. Accordingly, we find a lack of

association on the Original Specimen between the mark

and any underwriting service offered by Applicant.17

16 MERRIAM-WEBSTER, meriam-webster.com/dictionary/broker (accessed September 24,
2019).
17Moreover, we note that the Original Specimen was submitted March 22, 2018. We agree
with the Examining Attorney’s assessment that the statement on this specimen that “Health
New England Be Healthy is becoming BeHealthy Partnership effective March 1, 2018” – a
date prior to submission of the specimen – leads prospective consumers to perceive either

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Serial No. 86871517

B. Substitute Specimens

The Examining Attorney observes that “[n]either of the [Substitute Specimens]

display the applied-for mark . . . itself, or in connection with insurance underwriting

services.” Examiner’s Brief, unnumbered p. 4 (9 TTABVUE 5). Although Applicant

does not mention the Substitute Specimens in its brief, and therefore appears to

concede that these specimens do not show use of the mark in commerce for the Class

36 services, for completeness we review these specimens.

The mark does not appear on the Substitute Specimens; therefore, these

specimens do not and cannot show use of the mark in commerce for any service.

Accordingly, we find a lack of association on the Substitute Specimens between the

mark and any underwriting service offered by Applicant.

C. Reconsideration Specimens

The Examining Attorney observes that Applicant submitted “four screenshots

from [A]pplicant’s website. Two screenshots [submitted for Class 44] reference the

mark and state that it is no longer in use effective March 1, 2018. The other two

screenshots [submitted for Class 36] fail to show use of the applied-for mark in

connection with the relevant services.” Examiner’s Brief, unnumbered p. 4 (9

TTABVUE 5). Applicant contends that the first Class 44 Reconsideration Specimen

prominently shows the mark on Applicant’s webpage and contains a link titled

“brokers.” Based on those two elements, Applicant argues:

that Applicant no longer uses the mark or that the advertised services are no longer provided
under the mark.

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Serial No. 86871517

[A]ll brokers understand that underwriting is an inherent
part of obtaining insurance for a client. In the present case,
therefore, insurance brokers visiting the Applicant’s
website and seeing the brokers link expect that insurance
underwriting services are part of the services offered by the
Applicant.

Brief, p. 2 (7 TTABVUE 3). Applicant also argues that the first Class 36

Reconsideration Specimen is “the Brokers subpage that is displayed when following

the ‘BROKERS’ link” from the first Class 44 Reconsideration Specimen, and,

“[n]otably, the Brokers subpage clearly shows the link/term ‘Underwriting’ under the

‘Tools and Resources’ section.” Id., p. 2 (7 TTABVUE 3).

We note initially that Applicant’s mark is not present on either of the Class 36

Reconsideration Specimens. We also note that the word “underwriting” appears on

the first Class 36 Reconsideration Specimen (i.e., the “brokers” subpage). The smaller

text next to the word “underwriting” is unclear due to the quality of the image

submitted by Applicant.18

As with the Original Specimen, the single word “brokers” on the Class 44

Reconsideration Specimens does not indicate that Applicant underwrites insurance

for prepaid health care, and would not be perceived as a reference to underwriting

services. There is no reference to underwriting services specifically on this webpage;

and the jump from a one-word occurrence of “brokers” to underwriting insurance for

prepaid health care is unsupported. Applicant provided no evidence to support its

18Applicant “has a duty to ensure that the evidence it submits is legible.” See Alcatraz Media,
Inc. v. Chesapeake Marine Tours Inc. dba Watermark Cruises, 107 USPQ2d 1750, 1758
(TTAB 2013).

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Serial No. 86871517

assertions relating to what brokers visiting Applicant’s website would understand or

expect. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed.

Cir. 2018) (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 76 USPQ2d

1616, 1622 (Fed. Cir. 2005) (“Attorney argument is no substitute for evidence.”)). On

this record, the Class 44 Reconsideration Specimens by themselves contain no

reference that would create an association between underwriting services and the

mark.

Applicant contends that its “brokers” subpage (i.e., the first Class 36

Reconsideration Specimen which does not show the mark) is proximate to its

preceding page (i.e., the first Class 44 Reconsideration Specimen which contains the

mark) and is displayed when users follow the clickable “brokers” link from that

preceding page. As Applicant points out, there is “no requirement that a single

webpage of a multi-page website show the mark used in connection with each term

of the” recitation of services; rather, the mark and a reference to services shown on

separate but proximate webpage can convey the required association. Brief, p. 3 (7

TTABVUE 4). Applicant contends that consumers would associate the mark on the

first Class 44 Reconsideration Specimen with the reference to underwriting on the

first Class 36 Reconsideration Specimen.

Whether Applicant’s multiple webpages create such an association between its

mark and underwriting services is a question of fact. Cf. In re Azteca Sys., Inc., 102

USPQ2d 1955, 1957 (TTAB 2012) (“Whether a specimen is a display associated with

the goods is a question of fact.”). Because there is no evidence bearing on the reaction

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Serial No. 86871517

of the purchasing public to Applicant’s use of , we must rely

on our own analysis of the webpages to determine whether consumers would perceive

as a service mark identifying Applicant’s Class 36

“underwriting insurance for prepaid health care” services. In re Signal Cos., Inc., 228

USPQ 956, 957 (TTAB 1986); In re Wakefern Food Corp., 222 USPQ 76, 77 (TTAB

1984). Although the mark appears on the first webpage (i.e., the Class 44

Reconsideration Specimens), consumers would view it only as a soon-to-be defunct

name for what will become BeHealthy Partnership. In addition, Applicant’s mark is

not used in close proximity to the “brokers” link that leads to a subpage where

Applicant refers to underwriting services (but on which it doesn’t use the mark or

even the BeHealthy Partnership mark). Thus, consumers are unlikely to make an

association between and any content on the linked

webpages. Regardless, as noted above, the single word “brokers” on the Class 44

Reconsideration Specimens does not indicate that Applicant underwrites insurance

for prepaid health care, would not itself be perceived as a reference to underwriting

services, and does not function as an offer to enter into an arrangement for

underwriting insurance for prepaid health care.

In support of its argument that its offer of underwriting services on the “brokers”

subpage creates an association between the mark which appears on a preceding

webpage, Applicant points to Example 4 of TMEP § 1301.04(i) (Examples of

Acceptable Service-Mark Specimens). Reliance on this example is inapposite.

Example 4 involves software as a service (SAAS) services featuring software for use

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Serial No. 86871517

in staff management and related scheduling tasks, and presents as the specimens an

online portal (or launch screen) and a sign-in screen through which one must log in

to access the software services. The TMEP explains that the

[m]ark-services association is present because the mark
appears on the launch screen where it is customary in such
industry to place the mark under which the services are
offered and such placement is recognized as the
introduction of the online services; and the mark also
appears on the sign-in screen where it is customary to
input credentials to gain access to online services. The
context in which the mark is used, i.e., on the title and sign-
in screens, creates the mark-services connection (since
using such screens is common practice for rendering such
services) and implies that the services are available and
rendered once the user initiates access to the services by
logging in. The launch screen alone is acceptable because
it is generally known that such screens are used to initiate
the start up of or access to online services. The sign-in
screen is also acceptable on its own since it is a generally
known means of accessing online services. The mark is also
displayed on another screen which shows the mark while
the services are being performed and, thus, the proximity
of the mark to the services conveys a connection

TMEP § 1301.04(i) (Example 4). This is not the situation with Applicant’s

straightforward website Reconsideration Specimens. There is no software launch or

sign-in screen. The attempt at analogizing a software launch screen for SAAS services

to a regular webpage linking to a subpage mentioning underwriting services is

flawed.

Upon close consideration of Applicant’s Reconsideration Specimens and

arguments related thereto, we find that use of the mark on the first page is not

associated with reference to the underwriting services on the subpage (where other

marks are used) such that users would sufficiently perceive an association between

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Serial No. 86871517

use of the mark on one page and services on another. Accordingly, we find a lack of

association on the Reconsideration Specimens between and

any underwriting service offered by Applicant.

IV. Decision

None of Applicant’s specimens demonstrate use of the mark in a manner that

creates in the minds of potential customers a direct association between the mark

and the recited Class 36 services. We therefore affirm the

refusal to register the mark in Class 36. The application will proceed to registration

in due course for the Class 44 services (to which the refusal does not apply).

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