February 7, 2023

Volume XIII, Number 38


February 07, 2023

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February 06, 2023

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"TAKETEN" and "TAKE 10!" Trademarks Not Confusingly Similar

In In re St. Helena Hosp. (Fed. Cir. Dec. 16, 2014), the Federal Circuit held that St. Helena Hospital should have been allowed to register its TAKETEN mark, finding that it was not likely to cause confusion with the mark TAKE 10!, owned by the ILSI Foundation.  St. Helena used its TAKETEN mark in connection with its ten-day residential health improvement program at its facility in St. Helena, California. The TAKE 10! mark was used in connection with programs aimed at encouraging children to exercise at least 10 minutes per day.  The Trial Trademark and Appeal Board (the “Board”) upheld the examiner’s rejection of the TAKETEN mark on the grounds that it was likely to cause confusion with Take 10!.  While the Federal Circuit essentially agreed with the Board that the two marks are substantially similar, the Court reversed the Board’s decision because there was not substantial evidence overall to support a finding of likelihood of confusion.  

The court reviewed each of the other relevant factors relied on by the Board, including (1) the similarity or dissimilarity and nature of the goods and services; (2) the similarity or dissimilarity of established, likely-to-continue channels of trade; and (3) the conditions under which and buyers to whom sales are made.  In each case, the court found insufficient evidence to support the Board’s findings.  Of interest on the channels of trade factor, the court rejected the argument that the channels of trade for the respective goods and services were similar because they were advertised on the internet.  Quoting a popular trademark treatise, the court held that “Advertising on the Internet is ubiquitous and ‘proves little, if anything, about the likelihood that consumers will confuse similar marks used on such goods or services.’” 

© 2023 Honigman Miller Schwartz and Cohn LLP National Law Review, Volume IV, Number 353

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William Berndt  Honigman Miller trade secrets false advertising trade secret law

 Mr. Berndt is a trial lawyer with substantial experience in state and federal courts across the country. He focuses his practice on trade secret and false advertising claims. He represents businesses and senior executives in disputes relating to noncompetition agreements, trademark and copyright, fraud, professional liability, internal investigations, and general business and commercial litigation. Mr. Berndt has first-chair experience in trials, arbitrations and other proceedings.

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David L. De Bruin appellate attorney patent litigation USPTO Honigman Chicago
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Mr. De Bruin is a seasoned first-chair trial and appellate attorney. He concentrates his practice on patent litigation and related proceedings before the United States Patent and Trademark Office. Mr. De Bruin successfully argues legal issues, as well as explain the most complex technology to judges and juries.

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Mr. Fruchter defends or initiates litigation when it is inevitable and avoids lawsuits where possible. He provides zealous and creative representation that protects his clients’ legal rights and advances their strategic objectives. Mr. Fruchter litigates in state and federal courts across the country, and he has handled matters involving international and cross-border issues.

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Mr. Gowen represents companies, individuals and law firms in disputes, including those involving intellectual property, trade secrets, unfair competition, employment matters and other business litigation matters. He approaches litigation with an eye toward results; understanding that advancing his clients’ litigation strategies should fit within their overall business interests.

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Steven A Weiss Litigation attorney Honigman Law firm Chicago ediscovery
Leader, Complex Commercial Litigation Practice Group

Mr. Weiss provides advice on a wide variety of business litigation for companies and business people. He is focused on resolving business disputes with particular experience handling intellectual property, breach of contract, trade secret, employment and covenant not to compete matters. Local and national companies and individuals retain Mr. Weiss to handle a full range of business disputes because they trust his judgment and litigation skills.

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