Pick up a Trademark Trial and Appeal Board decision involving a likelihood of confusion refusal and will likely see the statement that the relatedness of goods factor must be decided based on goods or services as they are described in the applications or registrations at issue. No consideration is given the actual goods or services at issue. This is why when conducting a preliminary trademark search it is imperative to focus on the descriptions of goods rather than what you learn through an Internet search.
There is an exception to this general rule. When the nature of the goods or services is technical in nature or the description is vague, extrinsic evidence may be offered to understand the meaning of the descriptions. The TTAB issued one case that applied this exception in 2018 and we recently saw the first case of 2019 to apply the exception.
Reproductive Medicine Associates of New Jersey, LLC applied to register the mark ARTEMIS for “computer software platforms for use by fertility healthcare providers for the purpose of accessing patient electronic medical records.” The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with a prior registered mark ARTEMIS HEALTH (HEALTH disclaimed) for “software as a service (SAAS) services featuring software, namely, for analysis, monitoring, report generation, planning, risk and expense management and decision making regarding health care information and utilization of employees.”
The Trademark Office argued that this broad description covered software used by fertility healthcare providers for accessing electronic medical records. Reproductive Medicine Associates of New Jersey argued that the ARTEMIS HEALTH description was limited to managing employee benefits. The TTAB found the goods were technical in nature and the ARTEMIS HEALTH description was vague. Therefore, extrinsic evidence of the actual goods was allowed, which lead to the ultimate conclusion that the two software applications were unrelated.
This is an important decision for trademark searchers when formulating a search plan and reviewing the search results. When goods or services are technical nature, more is needed than merely a similar nature and similar field in order for relatedness to be found.