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. 86984307
_____

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 mark HEALTH NEW ENGLAND BE HEALTHY, in standard

characters and with a claim of acquired distinctiveness as to HEALTH NEW

ENGLAND, for “underwriting insurance for prepaid health care” in International

Class 36.1

1 Application Serial No. 86984307 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.
Serial No. 86984307

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 4-7). The Examining Attorney objected to the new material. Examiner’s

Brief, unnumbered p. 2 (7 TTABVUE 2). 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 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

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

as a “website page”3:

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.

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Serial No. 86984307

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 applied-for mark in use in commerce in connection with the services

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

insurance underwriting” services.4 In response thereto, Applicant made no argument

nor provided any explanation, but submitted the following substitute specimens (the

“Website Substitute Specimens”)5 described as three “website page[s] showing

services”6:

4 April 11, 2018 Office Action at TSDR 2.
5 April 16, 2018 Response to Office Action at TSDR 6-8.
6 Id. at TSDR 2.

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Serial No. 86984307

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Serial No. 86984307

The Examining Attorney rejected the substitute specimens and made final the

refusal under Sections 1 and 45 because “the substitute specimen[s] also fail[] to show

use of the applied-for mark in connection with the relevant insurance underwriting

services.”7

When the refusal was made final, Applicant appealed, requested reconsideration,8

and stated that “[s]oley for the purpose of advancing the . . . application and without

conceding to the validity of the rejection”9 it submitted the following substitute

7 May 15, 2018 Office Action at TSDR 2.
8 The subject application is a divisional “child.” See TMEP § 1110 (Oct. 2018). The original
application included the Class 36 underwriting services at issue in this appeal and Class 44
health maintenance organization services. In addition to requesting reconsideration after
final refusal, Applicant filed a request to divide out the Class 36 services so the original
application could proceed to issuance of a registration for the Class 44 services – for which
Applicant was able, after receiving the same refusal at issue in this appeal, to successfully
demonstrate with a substitute specimen use of the mark in commerce.
9 November 15, 2018 Request for Reconsideration at TSDR 6.

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Serial No. 86984307

specimen (the “Brochure Substitute Specimen”) described as “screenshot from a

website” and a “website page”10:

The Examining Attorney denied the request for reconsideration, finding that the

substitute specimen did not “demonstrate use of the mark HEALTH NEW

ENGLAND BE HEALTHY in connection with insurance underwriting services.”11

Thereafter, the appeal was resumed. As explained below, we affirm the refusal to

register.

10 November 15, 2018 Request for Reconsideration at TSDR 2, 7. As observed by the
Examining Attorney, although Applicant described this specimen as coming from a website,
it instead appears to be a paper brochure based on the trifold configuration and QR code. See
Examiner’s Brief, unnumbered p. 3 (7 TTABVUE 3).
11 December 18, 2018 Request for Reconsideration Denied at TSDR 1.

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Serial No. 86984307

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

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

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Serial No. 86984307

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

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 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;”12 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.”13 According to Applicant, “[a]s is readily understood by insurance

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

12THE 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).
13BUSINESS DICTIONARY, businessdictionary.com/definition/underwrite (accessed September
24, 2019).

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Serial No. 86984307

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.” Brief, unnumbered p. 1 (4 TTABVUE

2).

A. The Original Specimen

The Examining Attorney argues that the Original Specimen “fails to directly

reference any services.” Examiner’s Brief, unnumbered p. 3 (7 TTABVUE 3).

Applicant contends that the Original Specimen prominently shows the mark on

Applicant’s webpage, which contains a “brokers” link in close association with the

mark, and argues:

[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 broker link expect that insurance
underwriting services are part of the services offered by the
Applicant.

Brief, unnumbered p. 1 (4 TTABVUE 2). However, Applicant provided no evidence to

support its 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.”)).

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Serial No. 86984307

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).”14 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 HEALTH NEW ENGLAND

BE HEALTHY. Accordingly, we find a lack of association on the Original Specimen

between HEALTH NEW ENGLAND BE HEALTHY and any underwriting service

offered by Applicant.15

B. The Website Substitute Specimens

The Examining Attorney characterizes the second webpage of the Website

Substitute Specimens as an updated version of the Original Specimen which is

otherwise unacceptable because this updated webpage fails to directly reference the

services; and observes that the first and third webpages respectively allow

14MERRIAM-WEBSTER, meriam-webster.com/dictionary/broker (accessed September 24,
2019).
15Moreover, 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
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. 86984307

“consumers to ‘FIND A PROVIDER’ or ‘ENROLL,’ [but] neither . . . adequately

display[s] the mark in connection with the relevant services.” Examiner’s Brief,

unnumbered p. 3 (7 TTABVUE 3). Applicant does not point out any specific reference

or association to the services on these specimens, but rather makes the unsupported

generalization that the specimens “clearly demonstrate that the

healthnewengland.org website has used, as of the claimed date of first use, the . . .

mark in connection with the provision of health insurance. . . . Thus, it is patently

clear that the provided specimens show the . . . mark used in connection with the

provision of ‘underwriting insurance for prepaid health care.’” Brief, unnumbered p.

2 (4 TTABVUE 3).

As an initial matter, we note that the third webpage provided in the Website

Substitute Specimens does not display the mark, and Applicant provided no

additional evidence or explanation as to how any content from that webpage could be

associated with the proposed mark. As to the second webpage, once again, the single

word “brokers” 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 mention or reference to such services; indeed, this webpage appears to discuss

healthcare services – not insurance services. Similarly, the first webpage discusses

health care providers and becoming a member of Applicant’s health maintenance

organization; there is no direct association or reference to underwriting services.

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

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Serial No. 86984307

between HEALTH NEW ENGLAND BE HEALTHY and any underwriting service

offered by Applicant.

C. Brochure Substitute Specimen

The Examining Attorney notes that mark “appears in fine print” in two places on

the Brochure Substitute Specimen. “The first reference may refer to a call center,

support desk, or even a trade name. The second reference refers vaguely to ‘benefits

offered to members’ and might refer to any number of perks conferred to people based

upon affiliation with a particular organization or club.” Overall, “the brochure fails to

directly connect the applied-for mark with insurance underwriting services for

prepaid health care.” Examiner’s Brief, unnumbered p. 3 (7 TTABVUE 3). Applicant

does not point to any specific reference or association to the underwriting services,

but rather makes the same unsupported generalization that the specimen “clearly

demonstrate[s] that the healthnewengland.org website has used, as of the claimed

date of first use, the . . . mark in connection with the provision of health

insurance. . . . Thus, it is patently clear that the provided specimens show the . . .

mark used in connection with the provision of ‘underwriting insurance for prepaid

health care.’” Brief, unnumbered p. 2 (4 TTABVUE 3).

We see no such clear – or even a tenuous – connection with underwriting services.

Both occurrences of the mark are within the blue text box that runs across the bottom

of a portion of the brochure. The first occurrence of the mark informs readers that

they may “learn more about Health New England Be Healthy and all the benefits

offered to members” by calling a toll-free number or visiting Applicant’s webpage. The

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Serial No. 86984307

second occurrence of the mark tells readers how to become a member of Applicant’s

health maintenance organization and how to learn more about health plan options,

again by calling a toll-free number or visiting Applicant’s webpage. There is no direct

association or reference to underwriting services. Accordingly, we find a lack of

association on the Brochure Substitute Specimen between Applicant’s proposed mark

HEALTH NEW ENGLAND BE HEALTHY and any underwriting services offered by

Applicant.

IV. Decision

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

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

and the recited services. We therefore affirm the refusal to register.

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