Arthrex, Inc.

Trademark Trial and Appeal Board

May 24, 2011

No. 77532754 (T.T.A.B. May. 24, 2011)

Mailed:
May 24, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Arthrex, Inc.
________

Serial No. 77532754
_______

Karin H. Butchko of Carlson, Gaskey & Olds for Arthrex,
Inc.

Steven M. Perez, Trademark Examining Attorney,
Law Office 101 (Ronald R. Sussman, Managing Attorney).
_______

Before Bucher, Grendel and Bergsman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Arthrex, Inc. (“applicant”) has appealed from the
final refusal of the trademark examining attorney for the
registration of an intent-to-use application for the mark
MULTIFIRE SCORPION, in standard character form, for
“medical devices, namely, a suture passer that
independently passes two sutures through tissue,” in Class
10. Applicant disclaimed the exclusive right to use the
word “Multifire.”
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77532754
2
The Examining Attorney has refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on
the ground that applicant’s mark so resembles the following
three previously-registered marks owned by the same entity:
1. Registration No. 1460749 for the mark MULTIFIRE,
in typed drawing form, for “surgical stapling instruments
and disposable cartridges containing staples therefore,” in
Class 10;1
2. Registration No. 1742991 for the mark MULTIFIRE
ENDO GIA, in typed drawing form, for “medical devices;
namely, laparoscopic instruments and parts and accessories
therefore,” in Class 10;2 and
3. Registration No. 1909231 for the mark MULTIFIRE
VERSATACK, in typed drawing form, for “wound closure
devices; namely, surgical staplers and accessories
therefore,” in Class 10.3
As a preliminary matter, the Examining Attorney's
objection to evidence filed as an exhibit to applicant's
brief as untimely is sustained and this evidence has not
been considered. Trademark Rule 2.142(d) provides that the
record in the application should be complete prior to the

1 Issued October 13, 1987; renewed.
2 Issued December 29, 1992; renewed.
3 Issued August 1, 1995; renewed.
Ser No. 77532754
3
filing of an appeal. Filing evidence with an appeal brief,
or as in this case, one day after filing the brief, is
clearly untimely.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We focus our likelihood of confusion analysis on
Registration No. 1460749 for the mark MULTIFIRE, in typed
drawing form, for “surgical stapling instruments and
disposable cartridges containing staples therefore” because
the mark and the goods in that registration are most
closely related to those in the application at issue. If
we find that there is no likelihood of confusion with this
registered mark in connection with the listed goods, there
is no need for us to consider the likelihood of confusion
Ser No. 77532754
4
with the other two registered marks. See In re Max Capital
Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. The similarity or dissimilarity and nature of the
goods described in the application and the services in
the registration, the likely-to-continue channels of
trade and the classes of consumers.

To show that the goods are related, the Examining
Attorney submitted the following evidence:4
1. An excerpt from the Covidien website
(http://autosuture.com) advertising the sale of that
company’s staplers and suturing devices although under
different marks.5
2. An excerpt from applicant’s website (arthrex.com)
advertising the sale of surgical staples and a “QuickFix
Small Staple System,” and a guide, impactor and tamp for
small staples.6 The website does not show applicant using a
MULTIFIRE mark to identify staples or staple accessories.
Applicant’s website demonstrates that applicant sells
surgical staples and staple accessories but under a
different mark than it intends to use for its suture
passer.

4 We did not consider the excerpts from the Smith & Nephew
website because it specifically stated that the “information was
intended for Australian customers only.”
5 February 23, 2010 Office Action. Covidien appears to be
related to the registrant because it uses the MULTIFIRE
trademarks to identify its staplers.
6 February 23, 2010 Office Action.
Ser No. 77532754
5
3. An entry from the Encyclopedia of Surgery website
(surgeryencyclopedia.com) for “Stitches and Staples.”7 This
submission indicates that stitches (or sutures) and staples
are alternative methods for closing a wound.
Definition

Stitches and staples are two methods by
which a wound may be closed. Stitches
use specialized needles and thread to
“sew” a wound closed. Staples are thin
pieces of metal that are placed with a
stapling device through the edges of a
wound to hold it closed.

* * *

Description

… Stitches and staples are two commonly
used wound closure methods.

Stitches

Sutures, as stitches are often called,
are the way that most wounds are
closed. Suture materials have various
characteristics that determine their
use. The two main components of suture
materials are the needle and thread.

* * *

Technique. … Several instruments are
necessary for proper wound closure,
including dissecting scissors (for
cleaning the wound); suture scissors
(for cutting suture thread); a needle

7 August 25, 2010 Office Action. The Examining Attorney
submitted this entry twice. The second entry was through the
Answers.com website.
Ser No. 77532754
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holder (for manipulating the needle);
and forceps (for manipulating tissue).8

Staples

A distinct advantage that staples have
over sutures is their quick placement …
however, it is more difficult to
correctly align the edges of a wound
for stapling, and staples generally
cost more than sutures.

4. An article entitled “Surgical Staples Vs.
Sutures” from the Livestrong.com website.9 The article
states that staples and sutures are alternative methods for
closing a wound.
Overview

To close a surgical wound, a doctor
might use sutures (needle stitches) or
surgical staples. When the results are
similar, the decision might be one of
personal preference. When one method
is superior to the other with respect
to healing and known rate of
complications, the surgeon might choose
one over the other.

* * *

Benefits

In our surgical procedure where staples
or sutures are appropriate, both are
considered safe and equally effective
at closing the skin.

8 The list of “instruments” used for wound closure is helpful in
analyzing the list of goods in the third-party registrations
infra.
9 August 25, 2010 Office Action.
Ser No. 77532754
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5. Third-party registrations.
The Examining Attorney has submitted ten use-based,
third-party registrations for products that are similar to
the goods listed in both the application and registration
at issue. Third-party registrations which individually
cover a number of different products that are based on use
in commerce may have some probative value to the extent
that they serve to suggest that the listed products are of
a type which may emanate from the same source. In re
Albert Trostel & Sons Co., 29 USPQ2d at 1785-1786; In re
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988). The registrations are listed below.10
Mark Reg. No. Goods
3016365 for, inter alia, Staplers,
scissors, suturing rings
GENICON 3055212 for, inter alia, Staplers,
scissors, needle drivers,
needles, suture wings
C-2 3106719 for, inter alia, Computerized
surgical manipulation system
comprising, inter alia, suturing
apparatus, staplers, needle
holders, guides and drivers,
ligature passing and knotting
instruments, needles, scissors

10 We have not included the entire description of goods for each
of the registrations. Only the goods in both applicant’s
application and registrant’s registration are listed.
Ser No. 77532754
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Mark Reg. No. Goods

3177969

and

3202659
for, inter alia, Wound closure
devices in the nature of
staplers, sutures, surgical
needles …11
Esutures 3193210 for Surgical skin staplers;
Surgical staplers; and surgical
sutures
OPTIMOM 3325672 for, inter alia, Surgical and
medical apparatus and instruments
for the fixation and stapling of
prosthesis; suture materials
A. HEISS 3376691 for, inter alia, Suture cutters,
sutures, staplers
3392847 for, inter alia, Staplers,
sutures, needles, scissors
DA VINCI S 3561484 for, inter alia, Suturing
apparatus, needles, needle
holders, forceps, scissors,
staplers

6. Abstracts and complete articles reporting on
studies comparing the effectiveness of staples versus
sutures.12
a. An article entitled “Closure of laparotomy
wounds: skin staples versus sutures” from
the Wiley InterScience website
(interscience.wiley.com).

11 Same owner.
12 All of the articles are in the August 25, 2010 Office Action.
Ser No. 77532754
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b. An article entitled “Stapled vs Sutured
Colorectal Anastomosis” from the Archives of
Surgery website
(http://archsurg.highwire.org).
c. An article entitled “The use of an
endoscopic stapler vs suture ligature for
dorsal vein control in laparoscopic
prostatectomy: operative outcomes.”
d. An article entitled “Sutures versus staples
for skin closure in orthopaedic surgery:
meta-analysis” from the BMJ website
(bmj.com).
e. An article entitled “Repair of Lacerations:
Sutures, Staples, and Dermabond Glue” from
the http://apps.med.buffalo.edu website.
7. An excerpt from the Cascade Healthcare Solutions
website (cascadehealthcaresolutions.com) advertising the
sale of sutures and staples under the heading “Sutures &
Staples.”13 The website states that “We offer a variety of
sizes and styles of sutures and staples.” However, we note
that the staples and sutures were not sold under the same
mark.

13 August 25, 2010 Office Action.
Ser No. 77532754
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8. Excerpts from the ConMed Linvatec website
(conmed.com) advertising the sale of suture passers and
staplers.14 However, we note that the suture passers are
sold under different marks: Spectrum MVP suture passer and
Articulator 35 endoscopic articulating stapler and Conmed
Reflex and Reflex skin staplers.
The evidence establishes that surgical staples and
sutures are alternative products for closing wounds (e.g.,
the Encyclopedia of Surgery states that “[S]titches
[sutures] and staples are two methods by which a wound may
be closed,” the article “Surgical Staples Vs. Sutures” from
the Livestrong.com website says that the use of staples or
sutures is a matter of preference, and the medical
abstracts report on studies comparing the effectiveness of
using sutures or staples in the same procedures). It
follows, therefore, that medical devices for inserting
surgical staples (i.e., “surgical stapling instruments and
disposable cartridges containing staples”) and inserting
sutures (i.e., a suture passer) are competing devices for
the insertion of would closures that would be sold in the
same channels of trade to the same classes of consumers
(i.e., doctors and surgeons).

14 August 25, 2010.
Ser No. 77532754
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With respect to the similarity of the channels of
trade, we note that the Cascade Healthcare Solutions
website advertises the sale of sutures and staples under
the heading “Sutures & Staples” and that the ConMed
Linvatec website advertises the sale of automated suture
passers and staplers.
With respect to the classes of consumers, we note that
applicant has said in its brief that “[t]he purchasers of
both Appellant’s and Registrant’s goods are physicians or
hospital personnel.”15
Applicant asserts that sutures and staplers do not
serve similar purposes and are used in completely different
procedures and for completely different reasons.16 However,
applicant’s contention is unsupported and, as indicated
above, it is directly contradicted by the evidence placed
into the record by the Examining Attorney.
In view of the foregoing, we find that the goods at
issue are related and are sold in the same channels of
trade to the same classes of consumers.

15 Applicant’s Brief, unnumbered page 6.
16 Applicant’s Brief, unnumbered pages 5-6.
Ser No. 77532754
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B. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd.,
9 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co.,
6 USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks,
we are mindful that the test is not whether the marks can
be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression so
that confusion as to the source of the goods and services
offered under the respective marks is likely to result.
San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735,
1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir.
June 5, 1992).
Furthermore, where, as here, the goods of the parties
are directly competitive, the degree of similarity in the
Ser No. 77532754
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respective marks necessary to find a likelihood of
confusion is less than if the goods at issue were not as
closely related. Real Estate One, Inc. v. Real Estate 100
Enterprises Corp., 212 USPQ 957, 959 (TTAB 1981); ECI
Division of E-Systems, Inc. v. Environmental Communications
Inc., 207 USPQ 443, 449 (TTAB 1980).
The marks are similar in appearance, sound, meaning
and commercial impression because they share the word
“Multifire.” With respect to the meaning and commercial
impression, the word “Multifire” suggests more than one
discharge.17 In fact, applicant contends that “Multifire”
is descriptive when used in connection with its suture
passer and suggestive when used in connection with
registrant’s staplers: MULTIFIRE in connection with
applicant’s suture passer means “the lever is fired
multiple times” and in connection with a surgical stapler,
it means that the stapler can be fire “multiple times.”18
In any event, as used by both applicant and registrant, the
term “Multifire” conveys the same meaning and commercial
impression.

17 The term “multi” means “many … multiple … more than one” and
the word “fire” means “to discharge.” Yahoo! Education website
(Yahoo.com) attached to the July 3, 2009 Office Action.
18 Applicant’s Brief, unnumbered pages 3-4.
Ser No. 77532754
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Furthermore, applicant incorporates the entire
registered mark. Likelihood of confusion is often found
where the entirety of one mark is incorporated within
another. The Wella Corp, v. California Concept Corp., 558
F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA
CONCEPT and surfer design for men’s cologne, hair spray,
conditioner and shampoo is likely to cause confusion with
the mark CONCEPT for cold permanent wave lotion and
neutralizer); Coca-Cola Bottling Co. v. Seagram & Sons,
Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL
LANCER and soldier design for club soda, quinine water and
ginger ale is likely to cause confusion with BENGAL LANCER
for gin); In re West Point-Pepperell, Inc., 468 F.2d 200,
175 USPQ 558 (CCPA 1972) (WEST POINT PEPPERELL and griffin
design for fabrics is likely to cause confusion with WEST
POINT for woolen piece goods).
We are not persuaded that the presence addition of the
term SCORPION in applicant’s mark is sufficient to
differentiate applicant’s mark from the registered mark.
Because the goods at issue are directly competitive,
consumers encountering the MULTIFIRE SCORPION suture passer
may mistakenly believe that it originates with the producer
of the original MULTIFIRE surgical stapler.
Ser No. 77532754
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In view of the foregoing, we find that the marks are
similar in terms of appearance, sound, meaning and
commercial impression.
C. The strength of the word MULTIFIRE.
As indicated above, applicant contends that its use of
the term MULTIFIRE in the mark MULTIFIRE SCORPION is
descriptive.
The goods to be used with the mark
MULTIFIRE SCORPION is [sic] a suture
passer that independently passes two
sutures through tissue without removal
of the suture passer. … By squeezing
the lever, the suture passer can be
fired a multiple number of times while
inserted into the tissue, or
“multifired.”19

Similarly, applicant argues that “the MULTIFIRE portion of
Registrant’s mark should be accorded a narrow scope of
protection as the staplers used with registrant’s MULTIFIRE
marks can be ‘multifired’ to discharge several staples into
the patient.”20 “Therefore, the MULTIFIRE portion of both
Appellant’s mark and Registrant’s marks is weak and should
be accorded a narrow scope of protection.”21
The main problem with applicant’s argument is that the
focus of our analysis is on the registration for the term

19 Applicant’s Brief, unnumbered page 3.
20 Applicant’s Brief, unnumbered page 4.
21 Id.
Ser No. 77532754
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MULTIFIRE as a stand alone mark. That registration is
entitled to the presumptions of Section 7(b) of the
Trademark Act, 15 U.S.C. §1057(b): that is, the validity of
the registered mark and of the registration of the mark.
Thus, even if we were to concede that MULTIFIRE is a weak
mark, it is well established that even the owner of a weak
mark is entitled to be protected from damage due to a
likelihood of confusion with another's use of the same or a
confusingly similar mark. Giant Food Inc. v. Rosso and
Mastracco, Inc., 218 USPQ 521, 526 (TTAB 1982). In view of
applicant having incorporated the entire registered mark
into its mark, for use in connection with a closely related
product, there is little basis upon which consumers could
distinguish the marks.
D. The conditions under which and buyers to whom sales
are made (i.e., impulse vs. careful, sophisticated
purchasing).

Applicant contends that the purchasers of both
products are physicians or hospital personnel who exercise
a high degree of care when purchasing such equipment.
Furthermore, “Appellant typically works closely with the
consumer when providing its goods to the consumer, for
Ser No. 77532754
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example through a representative or through education … as
to the nature and the source of the goods purchased.”22
Even assuming physicians and hospital personnel
exercise a high degree of care when purchasing suture
passers and surgical staplers, a high degree of care does
not outweigh the similarity of the marks and the directly
competitive nature of the goods. Being expert or skilled
in field of medical instruments and being able to observe
minute differences in physical and functional
characteristics of different devices does not mean that
physicians and hospital personnel are equally skilled in
analysis of trademarks under which these products are
marketed. Medtronic, Inc. v. Medical Devices, Inc., 204
USPQ 317, 326 (TTAB 1979). See also Carlisle Chemical
Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168
USPQ 110, 112 (CCPA 1970) ("Human memories even of
discriminating purchasers ... are not infallible.").
E. Balancing the factors.
In view of the similarity of the marks, goods and
services, channels of trade and classes of consumers, we
find that applicant’s mark MULITIRE SCORPION for “medical
devices, namely, a suture passer that independently passes
two sutures through tissue” so resembles the mark MULITFIRE

22 Applicant’s Brief, unnumbered page 6.
Ser No. 77532754
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for “surgical stapling instruments and disposable
cartridges containing staples therefore” as to be likely to
cause confusion
Decision: The refusal of register is affirmed.