Ambu Inc.

Trademark Trial and Appeal Board

Dec 7, 2005

No. 76131964 (T.T.A.B. Dec. 7, 2005)

12/7/05

THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

Trademark Trial and Appeal Board
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In re Ambu Inc.
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Serial No. 76131964
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Paul Grandinetti of Levy & Grandinetti for Ambu Inc.

John D. Dalier, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
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Before Hanak, Quinn and Walsh, Administrative Trademark
Judges.

Opinion by Hanak, Administrative Trademark Judge:

Ambu Inc. (applicant) seeks to register in standard
character form RES-CUE MASK for “medical apparatus, namely,
reusable resuscitation mask.” The application was filed on
September 20, 2000 with a claimed first use date of January
1997. Applicant has disclaimed the exclusive right to use
MASK apart from the mark in its entirety.
Citing Section 2(d) of the Trademark Act, the Examining
Attorney has refused registration on the basis that
Ser. No. 76131964
2
applicant’s mark, as applied to applicant’s goods, is likely
to cause confusion with the mark HOPKINS RES Q MASK
previously registered in standard character form for “face
mask, for medical use, with a disposable one way filter valve
to protect a wearer from a victim’s bodily fluids and to
avoid possible cross contamination.” Registration No.
2,505,918. This registration issued on November 13, 2001
with a claimed first use date of February 1, 1999.
Registrant, like applicant, disclaimed the exclusive right to
use MASK apart from the mark in its entirety.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining Attorney
filed briefs. Applicant did not request an oral hearing.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the marks and the similarities of the goods. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24, 29 (CCPA 1976)(“The fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences in
the marks.”).
Considering first the marks, we are obligated to compare
the marks “in their entireties.” In re National Data Corp.,
Ser. No. 76131964
3
753 F.2d 1056, 224 USPQ 749, 750 (Fed. Cir. 1985). However,
in comparing the marks in their entireties, it is entirely
appropriate to give less weight to a portion of a mark that
is merely descriptive of or generic for the relevant goods or
services. National Data, 224 USPQ at 751 (“That a particular
feature is descriptive … with respect to the relevant goods
or services is one commonly accepted rationale for giving
less weight to a portion of the mark.”).
Obviously, both marks end with the generic term MASK.
However, upon seeing the two marks, purchasers would not
assume they are similar simply because they share a common
generic term. Likewise, both marks contain distinctly
different misspellings of the word “rescue.” As applied to
applicant’s goods and registrant’s goods, the term “rescue”
is, at a minimum, very highly suggestive of the respective
goods. Accordingly, the highly suggestive character of this
term and the fact that applicant and registrant have
misspelled this term in distinctly different ways are factors
which enable consumers to distinguish the marks.
What clearly distinguishes registrant’s mark from
applicant’s mark is the presence of the arbitrary term
HOPKINS. Not only is HOPKINS the only arbitrary term in
either mark, but of additional importance is the fact that
Ser. No. 76131964
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HOPKINS is the first word in registrant’s mark. As a general
rule, consumers are more inclined to focus on the first word
in any trademark or service mark. Palm Bay Imports, Inc. v.
Veuve Clicquot, 396 F.3d 1396, 73 USPQ2d 1689, 1690 (Fed.
Cir. 2005). See also Presto Products v. Nice-Pak Products, 9
USPQ2d 1895, 1897 (TTAB 1998) (“It is often the first part of
a mark which is most likely to be impressed upon the mind of
a purchaser and remembered.”). Obviously, the general rule
that the first word in a mark is the most critical portion of
the mark does not apply if the first word is itself
descriptive or generic, or if the first word is a commonly
used word like “the” or “a.” However, this is not the case
before us inasmuch as HOPKINS is the only arbitrary word in
either of the two marks.
Turning to a consideration of the relationship between
applicant’s goods and registrant’s goods, we note that the
Examining Attorney has made of record absolutely no evidence
whatsoever showing how they are related. Of course, the
Examining Attorney is correct in contending that both
applicant’s goods and registrant’s goods are medical
apparatus. However, based on the identifications of the
goods, there are significant differences in applicant’s goods
and registrant’s goods.
Ser. No. 76131964
5
Applicant’s goods are resuscitation masks designed to be
worn by the patient, that is, the person to be resuscitated.
On the other hand, registrant’s goods are masks which are not
to be worn by the patient, but rather are to be worn by the
caregiver (i.e. a first responder, a nurse, a doctor) to
protect the caregiver from the victim’s bodily fluids. Thus,
the two masks serve distinctly different purposes.
Moreover, only professionals would purchase and use
resuscitation masks and masks to protect care givers from a
victim’s bodily fluids. Applicant submitted the declaration
of its president (Frank Homa) who stated he had been
marketing medical masks for 33 years and that purchasers of
such goods are sophisticated professionals. (Homa declaration
para. 7). At page 5 of his brief, the Examining Attorney
concedes that the purchasers and users are “sophisticated and
knowledgeable.”
Our primary reviewing Court has made it clear that with
regard to the issue of likelihood of confusion, purchaser
“sophistication is important and often dispositive because
sophisticated consumers may be expected to exercise greater
care.” Electronic Design & Sales v. Electronic Data Systems,
954 F.2d 713, 21 USPQ2d 1388, 1392 (Fed. Cir. 1992). Given
the clear differences in the marks and the differences in the
Ser. No. 76131964
6
goods, we find that sophisticated professionals would not be
confused by the contemporaneous use of the two marks.
Decision: The refusal to register is reversed.