The University of Oklahoma a/k/a OU lost its opposition proceeding against K-Jump Health Co., Ltd.’s pending application for the mark OUCARE (Stylized) for a variety of medical apparatus. OU’s principal argument when it came to the relatedness of goods likelihood of confusion factor was that its prior registrations for OU contained broad educational services descriptions that covered medical education and that medical apparatus are used in teaching medicine.
Ordinarily, when the goods or services at issue are used together, the Board will find that they are related. In fact, as recent as this February the Board found that cigars and spirits were related goods because they were often consumed together. However, OU’s problem was not with its argument. It’s problem was with the lack of evidence it offered to support its argument. The Board held:
We agree that the services identified in the registration are worded broadly enough to [en]compass educational services in the field of medicine, and that patients, medical staff, and medical students would use many of the medical apparatus identified in the application. However, there is no evidence to support a finding that such goods and services are commercially related.
OU offered only 12 use-based, third-party registrations of marks owned by colleges, universities, and the Mayo Foundation for Medical Education and Research. Third party registrations are generally accepted as evidence that certain goods or services are related. The problem with the third-party registrations offered by OU was that they did not cover both a medical apparatus and educational services. Instead, the third-party registrations covered only medical apparatus.
Although the Board ultimately held that medical apparatus and education services are unrelated, you can see that the Board was ready to make a finding of relatedness if the necessary evidence was presented to them. For trademark owners, this case highlights the importance of establishing the right evidentiary record, which seems elementary, but too often the necessary evidence is never offered to the Board. If you don’t offer the necessary evidence, you are begging for an unrelated finding.
For trademark searchers, this case shows how quickly a relatedness finding can turn. The next case involving medical apparatus and education services may very well be decided the other way, so staying on top of these developments is key when conducting a trademark search. The nice thing about using a trademark search engine like BOB is that when the next decision changes the state of relatedness between two goods or services, that change is reflected in BOB’s database so you don’t have to spend the time mining Board decisions.