Recent Decisions by the Trademark Trial and Appeal Board

Board Requires Disclosure Of Unredacted Documents

The Board granted a motion by Intex Recreation Corp. and Intex Marketing Ltd. (“Intex”) to compel The Coleman Company, Inc. (“Coleman”) to produce unredacted versions of certain documents.  Coleman claimed that the redacted information was either irrelevant or confidential.  Intex argued in response that relevance is not an appropriate basis to redact a document and that the Board’s standard protective order moots any confidentiality concerns.

After considering the parties’ positions, the Board concluded that it “is not persuaded that [Coleman] is entitled to redact information in its document production that it believes is irrelevant or non-responsive to [Intex’s] document requests.”  The Board began its analysis by underscoring that Federal Rule of Civil Procedure 34 discusses the production of “documents,” not sentences or paragraphs.  The Board also cited decisional authority holding that “parties making such redactions unilaterally decide that information within a discoverable document need not be disclosed to their opponents, thereby depriving their opponents of the opportunity to see information in its full context and fueling mistrust about the redactions propriety.”  The Board also stated that allowing the redaction of portions of documents on relevance grounds would burden the Board by requiring an in camera inspection of documents in order to rule on discovery disputes related to such documents.

The Board also concluded that Coleman’s confidentiality concerns were without merit.  Specifically, the Board concluded that its standard protective order was in place and protected against the disclosure of confidential information.  The Board also underscored the fact that if Coleman did not believe that the standard protective order was adequate, Coleman could have requested modification of that order.

Intex Recreation Corp. and Intex Marketing Ltd. v. The Coleman Company, Inc., Opposition No. 91220432 (T.T.A.B. February 24, 2016) [precedential].

WebMD Successfully Opposes WearMD Application

The Board recently sustained a challenge by WebMD LLC (“WebMD”) to WearMD, Inc.’s (“WearMD”) attempt to register WEARMD for “[m]edical services and preventative healthcare services provided via telecommunication and global computer networks to monitor and provide medical care to individuals through the use of wearable medical devices and other consumer health care monitoring products” in International Class 44.  WebMD opposed the application under Section 2(d) of the Trademark Act based on three registrations for WEBMD in multiple classes and a registration for WEBMD HEALTH MANAGER in International Class 44.

After finding that WebMD demonstrated both standing and priority, the Board went on to consider WebMD’s claim that the WEBMD mark merits famous mark status.  The Board analyzed several factors, including, length of use, promotion, customer base, and awards, and concluded that “the record contains the requisite clear evidence…[the] WEBMD mark appears to have achieved fame in connection with the services identified in the registrations.”

Within that framework, the Board found that the services at issue were “highly related.”  Specifically, the Board concluded that “‘preventative health services’ such as those in the Application would involve providing medical information, a focal point of [WebMD’s] services [and that the] services share the added similarity of online delivery, making consumers more apt to view them as related.”

The Board next conducted an assessment of the trade channels used by WebMD and WearMD to market their services.  As a result of that assessment the Board found that both parties provided services through the internet and advertised online through Facebook, Twitter and Google+, among others.  The Board concluded that the parties’ respective services “move[d] in the same channels of trade to the same general classes of customers.”

The Board also analyzed the similarity of the marks.  With respect to the WEBMD marks, the Board found that WEBMD and WEARMD are phonetically and visually similar featuring the common “MD” element preceded by a word containing one syllable beginning with “W” and “E.”  With respect to the WEBMD HEALTH MANAGER, the Board found that the “HEALTH MANAGER” portion of the mark comes later in the mark and was disclaimed and, thus, less significant.

The Board completed its analysis by rejecting WearMD’s argument that there were no instances of actual consumer confusion despite a two-year period of overlapping sales.  In that connection, the Board determined that “[t]he limited amount of time Applicant’s mark has been used creates little opportunity for confusion to have occurred.”

WebMD LLC v. WearMD, Inc., Opposition No. 91216701 (T.T.A.B. February 24, 2016) [not precedential].