Beiersdorf Aktiengesellschaftv.Southwest Technologies, Inc.

Trademark Trial and Appeal Board

Sep 8, 1998

No. 91095031 (T.T.A.B. Sep. 8, 1998)

Paper No. 30
EWH/ak
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 9/8/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Beiersdorf Aktiengesellschaft
v.
Southwest Technologies, Inc.
_____
Opposition No. 95,031
to application Serial No. 74/371,744
filed on March 25, 1993
_____
Ronald S. Kadden of Von Maltitz, Derenberg, Kunin, Janssen &
Giordano for Beiersdorf Aktiengesellschaft
Thomas H. Van Hoozer of Hovey, Williams, Timmons & Collins
for Southwest Technologies, Inc.
______
Before Simms, Hanak and Walters, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Southwest Technologies, Inc. (applicant) seeks to
register ELASTO-GEL and design in the form shown below for
“cast and splint pads, wound dressings” (class 5) and
“medical cushions and pads, namely hospital bed pads,
wheelchair cushions, and therapeutic belts, pads and wraps”
(class 10). The application was filed on March 25, 1993
Opposition No. 95,031
2
with a claimed first use date of June 1988 for the class 5
goods and February 1989 for the class 10 goods.
On August 4, 1994 Beiersdorf Aktiengesellschaft
(opposer) filed a notice of opposition alleging that long
prior to June 1988, opposer both used and registered the
marks ELASTOPLAST and ELASTOMULL for bandages. Furthermore,
opposer alleged that long prior to June 1988, it had used
the mark ELASTOPLAST in connection with athletic tape.
Continuing, opposer alleged that applicant’s mark ELASTO-GEL
and design so closely resembles opposer’s trademarks
ELASTOPLAST and ELASTOMULL such that their use on the
respective goods of the parties is likely to result in
confusion, mistake and deception.
In addition, opposer alleged that as the result of a
judgment dated January 8, 1987 entered against applicant in
Opposition No. 72,147 brought by opposer, “applicant is
precluded under the doctrine of res judicata from obtaining
the registration sought in the application opposed herein.”
(Notice of opposition paragraph 10). More specifically,
opposer noted that on April 30, 1984 applicant filed
application serial number 73/478,106 seeking to register
ELASTO-GEL and design in the form shown below for “medical
Opposition No. 95,031
3
cushions and pads, hot/cold therapeutic limb wraps, and hand
exercisers for muscle rehabilitation.”
Opposer stated that on July 22, 1985 it filed a notice
of opposition (Opposition No. 72,147) against registration
of the above mark based upon its prior rights in the
identical marks (ELASTOPLAST and ELASTOMULL) which form the
basis for opposer’s section 2(d) claim in this present
opposition. Opposer noted that on November 14, 1986,
applicant, without the written consent of opposer, withdrew
its application serial number 73/478,106, the subject of
Opposition No. 72,147. Thereafter, on January 8, 1987 this
Board entered the above judgment against applicant.
Applicant filed an answer which denied that the
contemporaneous is use of ELASTO-GEL and design by applicant
and ELASTOPLAST and ELASTOMULL by opposer is likely to
result in confusion, mistake or deception. As for opposer’s
claim of res judicata, applicant admitted the foregoing
sequence of events regarding the filing of its prior
application; the filing of the prior notice of opposition;
and the entry of judgment against it in the prior
Opposition No. 95,031
4
opposition. However, applicant denied that the doctrine of
res judicata was applicable to this proceeding. As
applicant explained in subsequent papers, “it is applicant’s
position that its prior mark and its current mark create
totally different commercial impressions” such that the
doctrine of res judicata is not applicable.
Finally, in its answer applicant also asserted the
affirmative defense of laches.
On December 14, 1994 opposer filed a motion for summary
judgment on its claim of res judicata and on applicant’s
affirmative defense of laches. Said motion was contested by
applicant.
In an opinion dated March 28, 1996 this Board entered
partial summary judgment in favor of opposer by finding
applicant’s laches defense to be legally insufficient.
However, with regard to opposer’s claim of res judicata,
this Board denied the grant of summary judgment, stating
that “there exists a genuine issue of material fact as to
whether the mark now sought to be registered by applicant
creates substantially the same commercial impression as the
mark which was the subject of a prior opposition.”
The large record in this case is fully described in the
opening pages of opposer’s brief. At page four of its
brief, applicant states that it “does not dispute the
Opposition No. 95,031
5
identification of the evidence now before the Board as set
forth [in] opposer’s brief.”
We will consider first opposer’s section 2(d) claim.
Of course, priority is not an issue in this proceeding.
Opposer has properly made of record certified status and
title copies of its registrations for ELASTOPLAST (typed
drawing form) and ELASTOMULL (typed drawing form).
Registration No. 250,633 for ELASTOPLAST issued on December
11, 1928 with a claimed first use date of January 5, 1925.
The goods of said registration are “plaster bandages.”
Registration No. 1,130,757 for ELASTOMULL issued on February
12, 1980 with a claimed first use date of December 13, 1976.
The goods of said registration are “non-adhesive elastic
gauze bandages.” In addition, opposer, a company organized
under the laws of the Federal Republic of Germany, has
established that, through its United States subsidiaries, it
has made continuous use of both of these marks in the United
States since at least 1978. It was in 1978 that the now
chief operating officer of opposer’s primary United States
subsidiary commenced work for another United States
subsidiary of opposer.
In any likelihood of confusion of analysis, two key
considerations (although not exclusive considerations) are
the similarities of the goods and the similarities of the
marks. Federated Foods, Inc. v. Fort Howard Paper Co., 544
Opposition No. 95,031
6
F.2d 1098, 192 USPQ 24, 29 (CCPA 1978)(“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 goods, we note that applicant’s
class 5 goods include “wound dressings” without any
limitations whatsoever as to types of wound dressings. The
term “dressing” is defined as “any of various materials
utilized for covering and protecting a wound. See also
bandage.” Dorland’s Illustrated Medical Dictionary (25th
ed. 1974). This same reference work, in defining the term
“bandage,” makes cross-reference to both “dressing” and
“strapping.” Thus, the term “wound dressings” in the
application is a very broad term which encompasses “any of
various materials utilized for covering and protecting a
wound,” including bandages. Hence, certain of applicant’s
class 5 goods (wound dressings) encompass the goods set
forth in opposer’s registrations for ELASTOPLAST (plaster
bandages) and ELASTOMULL (non-adhesive elastic gauze
bandages). Moreover, the record reflects that in practice,
opposer’s ELASTOPLAST and ELASTOMULL bandages have been
utilized since at least 1978 to cover (dress) a wound,
either by themselves or conjunction with other materials.
Turning to a consideration of applicant’s class 10
goods, we note that said goods include “therapeutic belts,
Opposition No. 95,031
7
pads and wraps.” When asked “what types of injuries or
conditions or aliments are treated by your therapy products
sold under the ELASTO-GEL mark,” applicant’s chairman of the
board (Edward Stout) responded as follows: “Well, of
course, I don’t know all of them and exactly how people use
them. We recommend sprains, strains, muscle aches, those
kind of things…”) (Stout discovery deposition page 58). Of
course, these are precisely the same conditions for which
non-adhesive elastic gauze bandages, such as opposer’s
ELASTOMULL bandages, are used. Moreover, the record
reflects that since at least as early as 1978, opposer has
made continuous use of its other mark (ELASTOPLAST) in
connection with both (1) elastic bandages used to treat
these same conditions, as well as with (2) the goods set
forth in the registration for ELASTOPLAST, namely “plaster
bandages.”
In sum, we find that certain of applicant’s class 5
goods (wound dressings) are legally identical to opposer’s
goods. Moreover, certain of applicant’s class 10 goods
(therapeutic belts, pads and wraps) are extremely similar to
opposer’s elastic bandages in that they serve to treat at
least some of the very same injuries and ailments.
In arguing that its goods “can be readily contrasted
with the elastic bandages of opposer,” applicant improperly
attempts to compare its actual goods with opposer’s actual
Opposition No. 95,031
8
goods. (Applicant’s brief page 23). For example, with
regard to its wound dressings, applicant argues that all of
its wound dressings “include a bacteria static hydrogel.”
(Id.) In arguing that its therapy products are “radically
different [from] the elastic gauze bandages of opposer’s
ELASTOPLAST and ELASTOMULL marks,” applicant relies upon the
fact that its therapeutic belts, pads and wraps are
“characterized by the ability to heat in a microwave or cool
by freezing.” (Id.) In contrast, the performance
capabilities of opposer’s elastic bandages and other
bandages are not likewise enhanced by heating or freezing.
However, the flaw in applicant’s reasoning is that “in
[an opposition] proceeding such as this, the question of
likelihood of confusion must be determined based on an
analysis of the mark as applied to the goods and or services
recited in applicant’s application vis-a-vis the goods
and/or services recited in an opposer’s registration [and
the goods for which the opposer has established prior
rights], rather than what the evidence shows the goods
and/or services to be.” Canadian Imperial Bank v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir.
1987). The pertinent part of applicant’s class 5 goods
reads simply “wound dressings,” not “bacteria static
hydrogel wound dressings.”
Opposition No. 95,031
9
Likewise, the most pertinent part of applicant’s class 10
goods reads simply “therapeutic belts, pads and wraps,” and
not “therapeutic belts, pads and wraps that can be heated in
a microwave or frozen.” As set forth in its application,
certain of applicant’s class 5 goods (wound dressings)
encompass products which are legally identical to the goods
set forth in opposer’s two registrations and the goods for
which opposer has established prior common law rights for
its ELASTOPLAST mark, namely, elastic bandages. Likewise,
certain of applicant’s class 10 goods (therapeutic belts,
pads and wraps) are legally extremely similar to opposer’s
elastic bandages in that they are functional equivalents.
The fact that applicant’s actual therapeutic belts, pads and
wraps are not the functional equivalents of elastic bandages
in that the former can be heated or frozen and the latter
cannot is irrelevant.
Having determined that certain of applicant’s class 5
goods (wound dressing) are legally identical to opposer’s
goods and that certain of applicant’s class 10 goods
(therapeutic belts, pads and wraps) are the functional
equivalents of certain of opposer’s goods (elastic
bandages), we turn to a consideration of the marks. In so
doing, we note at the outset that it is important to
remember that “when marks would appear on virtually
identical goods or services, the degree of similarity [of
Opposition No. 95,031
10
the marks] necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992)
In comparing opposer’s two marks to the word portion of
applicant’s mark, we note that all three consist of four
syllables, and that the first three syllables are identical.
Applicant has appropriated the first three syllables of
opposer’s long standing marks (i.e. ELASTO) and merely added
thereto the descriptive word GEL and a simple geometric
shape (i.e. a triangle). Indeed, applicant itself
acknowledges that “the ‘gel’ component [of applicant’s mark
ELASTO-GEL] derives from the hydrogel properties of the gel
component.” (Applicant’s brief page 20). All of applicant’s
wound dressings contain hydrogel. Moreover, applicant’s
therapeutic belts, pads and wraps also contain hydrogel. In
this regard, reference is made to applicant’s exhibit number
one where, in describing a neck wrap, the following
statement appears: “ELASTO-GEL is a specially formulated
gel with exceptional properties for transferring heat. The
gel provides moist heat therapy… The unique combination of
specifically selected fabric and a touch flexible gel
provides a nearly indestructible product, which is suitable
for use in environments from hospitals to athletic fields.”
Opposition No. 95,031
11
A predecessor Court to our primary reviewing Court long
ago stated that “if all that a newcomer in a field need do
in order to avoid the charge of confusing similarity is to
select a word descriptive of his goods [in this case GEL]
and combine it with a word which is the dominant feature of
a registered mark [in this case ELASTO] so that the borrowed
word [in this case ELASTO] becomes the dominant feature of
[the newcomer’s] mark, the registered trademark, made
valuable and outstanding by extensive advertising and use,
soon becomes of little value.”) Bon Ami Co. v. McKesson &
Robbins, Inc., 93 F.2d 915 (CCPA 1938)(BON AMI soap and
SHAV-AMI shaving cream held confusingly similar).
In an effort to minimize the fact that it appropriated
the first three syllables of each of opposer’s marks,
applicant makes the totally unsubstantiated claim that “the
‘elasto’ term is descriptive in connection with applicant’s
goods, which are elastic bandages which stretch.”
(Applicant’s brief page 21). While the ELASTO portion of
applicant’s mark and opposer’s marks may be slightly
suggestive of some applicant’s goods and opposer’s goods,
there is absolutely no evidence of record showing that it is
descriptive of any of the goods. The term “elasto” does not
appear in any dictionary. In this regard we note that
applicant has made of record by means of a notice of
reliance excerpts from three dictionaries: Webster’s New
Opposition No. 95,031
12
Collegiate Dictionary (1973); McGraw–Hill Dictionary of
Scientific and Technical Terms (1974); The American Heritage
Dictionary of the English Language (1981). It is quite
telling that none of these three dictionaries nor any other
dictionary consulted by this Board contain the term
“elasto.” Moreover, while this will be discussed in greater
length later, applicant was unable to find any third-party
mark containing any ELASTO component. In short, we find
that while the ELASTO component common to all three marks is
slightly suggestive of some of opposer’s and applicant’s
goods, it is certainly not descriptive, and it is clearly
deserving of protection.
Moreover, we find that ELASTO is the dominant portion
of all three marks. In finding THERM-O-LITE for storm
windows to be confusing similar to THERMOPANE for insulated
glass, the Court noted that “THERMO although suggestive, but
not descriptive, is the dominant feature of both
trademarks.” Libbey-Owens-Ford Co. v. General Window Co.,
125 USPQ 229, 231 (CCPA 1960). Interestingly, the Court
found that THERMO was only suggestive despite the fact that,
unlike ELASTO, THERMO is listed in every dictionary
consulted by this Board as a prefix meaning “heat.” See
also Schering Corp. v. Alza Corp., 207 USPQ 504, 509 (TTAB
1980) (“It is our opinion, that although CHRONO is a highly
suggestive term, meaning ‘time’, that, nevertheless, it is
Opposition No. 95,031
13
this term in each mark which gives the mark its primary
significance, and would be the word most likely to be
impressed upon the minds of purchasers and to be remembered
and used in calling for the goods.”) Again, CHRONO, unlike
ELASTO, is listed in every dictionary consulted by the Board
as a prefix meaning “time.” If THERMO and CHRONO are merely
suggestive despite being listed in every dictionary, then
the designation ELASTO -- which is not listed in any
dictionary -- is at most suggestive, and certainly not
descriptive, of some of applicant’s and opposer’s goods.
Finally, as for the fact that applicant’s mark contains
a simple geometric shape (i.e. a triangle), a few comments
are in order. First, the presence of a triangle in no way
alters the pronunciation or connotation of applicant’s mark.
This is of particular significance given the fact that
applicant acknowledges that it actively solicits orders for
its ELASTO-GEL products by telephone. (Stout discovery
deposition page 65). Moreover, applicant’s customers
frequently convey their orders to applicant by telephone.
(Id. page 66). Obviously, when the ELASTO-GEL mark is
spoken, the simple triangle design feature will not be
verbalized. In deciding whether marks are confusingly
similar, it has been noted that “similarly of sound may be
particularity important when the goods are of the type
frequently purchased by verbal order.” 3 J. McCarthy,
Opposition No. 95,031
14
McCarthy on Trademarks Unfair Competition section 23:22 at
page 23-48 (4th ed. 1998).
Second, it must be remembered that in order to be held
confusingly similar, marks need not be similar in all
respects, that is to say, in terms of visual appearance,
pronunciation and connotation. Similarity as to any one
factor can be sufficient to sustain a finding a likelihood
of confusion. Krin-Ko Corp. v. Coca-Cola Co., 390 F.2d 728,
156 USPQ 523, 526 (CCPA 1968). Here applicant’s mark and
opposer’s two marks are clearly similar in terms of
pronunciation and connotation. Moreover, even when
prospective purchasers have the opportunity to view
applicant’s mark in its entirety, it is our view that the
word portion of the mark predominates, and, as such, said
mark shares some similarity in terms of visual appearance to
both of opposer’s marks.
Before leaving our discussion of the similarities of
the marks, two arguments of applicant need to be dismissed.
First, at page 20 of its brief applicant argues that opposer
“uses the ‘ship bow and trumpet’ [design] throughout its
packaging as a distinguishing component.” Second, at page
30 of its brief, applicant argues that FDA regulations
require that the company names of both applicant and opposer
appear on their respective goods, and that this is “another
factor ... demonstrating why there is no likelihood of
Opposition No. 95,031
15
confusion.” Applicant’s arguments are legally insufficient.
The issue of likelihood confusion must be decided based upon
a comparison of applicant’s mark ELASTO-GEL and design per
se and opposer’s marks ELASTOPLAST and ELASTOMULL per se.
In our likelihood of confusion analysis, the Board is not
permitted to consider the trade dress of the products or any
additional wording that may appear on the products, other
than to the extent that these elements may show possible bad
faith adoption on the part of the applicant. Ultracashmere
v. Spring Mills, 828 F.2d 1580, 4 USPQ2d 1252, 1254 (Fed.
Cir. 1987).
In addition, while applicant’s arguments are legally
insufficient, we feel compelled to note that in practice the
“ship bow and trumpet” design simply does not appear on all
of opposer’s packaging. However, what is striking is the
fact that both opposer and applicant frequently employ a
blue and white trade dress for their respective products.
Moreover, a review of the relevant FDA regulation does not
support applicant’s position that the name of the
manufacturer must appear on applicant’s products and
opposer’s products. Rather, the FDA regulation in question
(21 CFR 801.1) simply requires that the name of the
manufacturer, packager or distributor appear on the
packaging. As will be discussed at greater length, both
applicant’s ELASTO-GEL products and opposer’s ELASTOPLAST
Opposition No. 95,031
16
and ELASTOMULL products are carried by the same
distributors. Thus, if we were to consider the FDA
regulation (which we are not), said regulation may only
serve to increase the likelihood of confusion in that the
name of the same distributor could appear on both ELASTO-GEL
products and on ELASTOPLAST and ELASTOMULL products without
the name of either applicant or opposer.
We will now turn to a consideration of the other
relevant du Pont factors which have been tried by the
parties. As to trade channels, when the goods of the
parties are legally identical or extremely similar, then the
trade channels will be the same. Indeed, in actuality both
opposer’s products and applicant’s products have been
carried by the very same wholesale distributors and dealers.
Moreover, opposer product’s and applicant's products have
appeared in the very same distributor catalogs. Indeed,
applicant “acknowledges that there is overlap between the
channels of trade.” (Applicant’s brief page 25). Obviously,
this factor favors opposer.
We will next consider the level of purchaser
sophistication, the cost of the goods and the conditions
under which the goods are purchased. As described in the
application and the two registrations, the goods (wound
dressings; therapeutic belts, pads and wraps; bandages)
encompass goods which, according to the evidence of record,
Opposition No. 95,031
17
are inexpensive, are sold to ordinary purchasers and are
often purchased in a hurried fashion because there is an
immediate need to treat a wound or other ailment. Indeed,
in practice applicant’s ELASTO-GEL and design products and
opposer’s ELASTOPLAST and ELASTOMULL products are sold in
pharmacies to ordinary purchasers with suggested retail
prices as low as $4.35. (Opposer’s exhibit 35). Applicant
argues that in reality, most buyers for its products and
opposer’s products are hospitals, distributors and
physicians who are “typically” sophisticated (Applicant’s
brief page 23) and who “normally” acquire said products “as
a result of careful thought.” (Applicant’s brief page 26).
Whether or not the vast majority of applicant’s and
opposer’s products are sold to sophisticated purchasers
exercising a high level of care is irrelevant when the
identification of goods in the application and the
identification of goods in the registrations are broad
enough to include products sold at nominal sums to ordinary
purchasers who are often making their purchasing decisions
in a hurry because of an immediate need to treat a wound or
ailment. Thus, the factors of (1) purchaser sophistication,
(2) conditions of sale and (3) cost of goods favor a finding
of likelihood of confusion.
We next consider the fact that, as acknowledged by
opposer at page 15 of its brief, there have been “no
Opposition No. 95,031
18
instances of actual confusion” reported to either party. Of
course, proof of actual confusion is not a prerequisite to a
finding of likelihood of confusion. However, the absence of
actual confusion in this case is not surprising given the
fact that, as applicant repeatedly emphasizes, the vast
majority of its ELASTO-GEL products and opposer’s
ELASTOPLAST and ELASTOMULL products have been sold in large
quantities to professional buyers (hospitals, distributors
and physicians) exercising a very high level of care. To
date, there has been minimal opportunity for actual
confusion to have occurred amongst the ordinary consumers
described above. Moreover, given the similarity of the
marks, ordinary consumers are not likely to later recognize
their initial confusion, and if they should, they are not
likely to take the time and effort to report it given the
nominal cost of the goods. Thus, we find, under the facts
of this particular case, that the absence of actual
confusion is a neutral factor.
Turning to a consideration of the number and nature of
similar marks in use on similar goods, we note that
applicant has introduced evidence showing use by third
parties of the mark ELASTIKON on elastic bandages and the
mark ELASTINET on support bandages. However, we have
accorded limited weight to this third-party use for three
reasons. First, we note that applicant’s own evidence
Opposition No. 95,031
19
(product catalogs and the like) shows that there are
literately hundreds of different brands of products similar
to those at issue here. From this list of hundreds,
applicant was able to find only two marks which are remotely
similar to either applicant’s mark or opposer’s marks.
Second, applicant has offered absolutely no evidence showing
the extent of use of either the ELASTIKON or the ELASTINET
marks. Third, and of greatest importance, is the fact that
neither of these two third-party marks contains the ELASTO
element common to both applicant’s mark and opposer’s marks.
As previously noted, it is this ELASTO element which is the
most prominent feature of both applicant’s mark and
opposer’s marks. Accordingly, we find that the factor
involving the number and nature of similar mark favors, if
any one, opposer in that after an exhaustive search,
applicant was not able to locate even one third-party use of
a mark containing the ELASTO element.
Finally, we turn to consideration of the fame of
opposer’s marks, including sales, advertising and length of
use. Opposer has made of record evidence demonstrating that
from 1978-1996, it sold over $50 million worth of
ELASTOPLAST products, and over $9 million worth of
ELASTOMULL products. Moreover, both of opposer’s marks have
been in use for long periods of time. Opposer’s
registration for ELASTOPLAST issued in 1928, and its
Opposition No. 95,031
20
registration for ELASTOMULL issued in 1980. In addition,
applicant was well aware of both of opposer’s marks when it
adopted its ELASTO-GEL and design mark. Nevertheless, we
find that despite opposer’s substantial and long use, it has
simply failed to prove that either of its marks is a famous
mark. In particular, opposer has presented no evidence that
either of its marks enjoys a high level of recognition
amongst purchasers. Hence, in our likelihood of confusion
analysis, we will accord opposer’s marks only the normal
scope of protection and not the expanded scope of protection
accorded famous marks.
In conclusion, we find that applicant’s mark in its
entirety is sufficiently similar to each of opposer’s marks
such that their use on identical and closely related goods
is likely to result in confusion. In reaching this
determination, we have taken into account the facts that the
channels of trade are identical; that the goods can be very
inexpensive; that the purchasers can be ordinary individuals
exercising minimal care and often buying under hurried
conditions; and that although opposer first registered its
ELASTOPLAST mark in 1928, there has not been one other
company, besides applicant, that has used an ELASTO mark on
goods even remotely similar to opposer’s goods or
applicant’s goods. Moreover, while we have no doubt on the
issue of likelihood of confusion, were such doubt to exist,
Opposition No. 95,031
21
said doubt must, of course, be resolved in favor of opposer
as the registrant and long prior user. See Century 21 Real
Estate, 23 USPQ2d at 1701.
Having sustained the opposition pursuant to opposer’s
section 2(d) claim, we elect not to consider whether the
doctrine of res judicata applies. See American Paging Inc.
v. American Mobilphone Inc., 13 USPQ2d 2036, 2039 (TTAB
1989), aff’d 17 USPQ2d 1726 (Fed. Cir. 1990) and cases cited
therein.
Decision: The opposition is sustained solely on
opposer’s section 2(d) claim.
E. W. Hanak
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
and Appeal Board

Opposition No. 95,031
22
Simms, Administrative Trademark Judge, dissenting:
Because of the differences between applicant’s mark
ELASTO-GEL and design and opposer’s marks ELASTOPLAST and
ELASTOMULL, I would find no likelihood of confusion and,
therefore, respectfully dissent.
First, I agree with the majority’s conclusion that,
based upon the goods recited in applicant’s application and
in opposer’s registrations as well as opposer’s goods for
which it has shown prior common law rights, the goods of the
parties must be considered identical in part and otherwise
commercially similar. Further, as described, they are
presumed to travel in similar channels of trade to the same
class of potential purchasers, including ordinary consumers.
However, because the marks of the parties are similar only
to the extent that each contains the suggestive formative
“ELASTO”, I do not believe that purchasers of wound
dressings and bandages will be confused as to source of the
respective products.
I disagree with the majority’s statement that the term
“ELASTO” is the dominant part of opposer’s marks. It is
certainly suggestive, as is the term “PLAST” (suggestive of
“plaster”) in the mark ELASTOPLAST. The formative “ELASTO”
suggests the “elastomeric” or elastic properties of
opposer’s elastic bandages. With respect to the mark
ELASTOMULL, the element “MULL” appears to be arbitrary. And
Opposition No. 95,031
23
in applicant’s mark, both elements (“ELASTO” and “GEL”) are
suggestive of the elastic properties of applicant’s wound
dressings and other products as well as the gel composition
thereof. In any event, because of the suggestive nature of
the only common element of the marks, purchasers are likely
to look to the other components to distinguish the marks.
Applicant’s mark also differs in sound and connotation from
each of opposer’s pleaded marks. All of these elements of
the respective marks should be considered in determining
whether or not confusion is likely. See In re Sarkli, Ltd.,
721 F.2d 353, 220 USPQ 111, 113 (Fed. Cir. 1983)(“Moreover,
such similarity as there is in connotation must be weighed
against the dissimilarity in appearance, sound, and all
other factors, before reaching a conclusion on likelihood of
confusion as to source.”).
There are numerous cases in which this Board and the
courts have found confusion to be unlikely where the only
element in common was a descriptive or suggestive word.
See, for example, Keebler Co. v. Murray Bakery Products,
Inc., 866 F.2d 1386, 9 USPQ2d 1736 (Fed. Cir. 1989)(PECAN
SANDIES vs. PECAN SHORTEES); Nutri/System, Inc. v. Con-Stan
Industries, Inc., 809 F.2d 601, 1 USPQ2d 1809 (9thCir.
1987)(NUTRI/SYSTEM vs. NUTRI-TRIM); In re Bed & Breakfast
Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986)(BED
AND BREAKFAST REGISTRY vs. BED AND BREAKFAST INTERNATIONAL);
Opposition No. 95,031
24
Henri’s Food Products Co. v. Kraft, Inc., 717 F.2d 352, 220
USPQ 386 (7thCir. 1983)(MIRACLE WHIP vs. YUGOWHIP); Bulova
Watch Co. v. Miller, 463 F.2d 1376, 175 USPQ 38 (CCPA
1972)(ACCUTRON vs. UNITRON); Clark Equipment Co. v. Baker-
Lull Corp., 288 F.2d 926, 129 USPQ 220 (CCPA 1961)
(YARDLOADER vs. YARDLIFT); Sears Mortgage Corp. v. Northeast
Savings F.A., 24 USPQ2d 1227 (TTAB 1992)(APPROVAL PLUS vs.
APPROVAL FIRST); Burns Philp Food, Inc. v. Modern Products,
Inc., 24 USPQ2d 1157 (TTAB 1992)(SPICE ISLAND vs. SPICE
GARDEN and design); and Stouffer Corp. v. Health Valley
Natural Foods Inc., 1 USPQ2d 1900 (TTAB 1986) (LEAN CUISINE
vs. LEAN LIVING). Compare Champagne Louis Roederer S.A. v.
Delicato Vineyards, ___ F.3d ___, 47 USPQ2d 1459 (Fed Cir.
1998)(CRISTAL vs. CRYSTAL CREEK). See also J.T. McCarthy,
Trademarks and Unfair Competition, §23.15[6]
(1992)(footnotes omitted):
Whether a mark is classified as “strong”
or “weak” is a very important element in
deciding likelihood of confusion. If the
common element of conflicting marks is a
word that is “weak” then this reduces the
likelihood of confusion. A portion of a
mark may be “weak” in the sense that such
portion is descriptive, highly suggestive,
or is in common use by many other sellers
in the market…
For example, the suffix “-tronics” (or
its equivalent misspelling “tronix”) can be
used to convey its ordinary suggestion that
products are electronic in character. The
inclusion in two marks of such a suffix may
alone be an insufficient basis to find a
likelihood of confusion where the initial por-
tions of the mark are sufficiently distinguish-
Opposition No. 95,031
25
able… Similarly, the use of KICKER was found not
to cause likely confusion with KIK-IT when both
were used on tabletop soccer games, the court
noting that the common element “kick” is
suggestive of such games.
Unlike the majority, I do not place much significance
on the fact that both opposer’s marks and applicant’s mark
contain the prefix “ELASTO.” Purchasers are not likely to
remember this minor element—-the “o” ending of “ELASTO”. In
this connection, applicant has pointed to the demonstrated
third-party use of the marks ELASTIKON for elastic bandages
and ELASTINET for elastic support bandages. See exhibits
54-59. However, even without this evidence, it is clear
that the prefix has an obvious suggestive meaning.
Applicant has also noted (brief, 25) that competitors use a
number of suggestive marks for their different types of
bandages or dressings.
For example, attention is invited to Exhibit
58 showing contemporaneous use of “Algenate”,
“Algederm”, “Algesorb”, “Kalginate” and
“Algesite”, all for algenate dressings,
“Covaderm”, “Duoderm”, “Exuderm”, and
“Royl-Derm”, all for different wound dress-
ings, “Span-gel”, “Hypogel”, “Normlgel”,
“New-Gel” and “Curagel”, all for hydrogel
dressings…
The majority has concluded that opposer’s marks are not
“famous” and entitled to an enlarged scope of protection. I
also note that there is no indication that opposer has a
“family” of “ELASTO-” marks–-that is, there is no evidence
that opposer has jointly promoted and sold its products
Opposition No. 95,031
26
under these marks such that purchasers would associate the
common element “ELASTO” with opposer, and, potentially, any
further ELASTO mark that was introduced into the
marketplace. Also, it is significant that the marks do not
have the same structure or characteristics such that
potential purchasers may associate applicant’s ELASTO-GEL
products with opposer. For example, contrary to applicant’s
mark, which the majority characterizes as the suggestive
term “ELASTO-” plus the generic term “GEL”, opposer’s marks
do not have components of this nature. Compare, for
example, McDonald’s Corp. v. McBagel’s Inc., 649 F.Supp.
1268, 1 USPQ2d 1761 (SDNY 1986)(various “Mc” marks vs.
McBagels) and McDonald’s Corp. v. McKinley, 13 USPQ2d 1895
(TTAB 1989)(various “Mc” marks vs. McTeddy).
While I agree that it is not entitled to much weight
herein, the fact that there have been no instances of actual
confusion despite 10 years’ coexistence should be taken into
consideration. In this regard, it is interesting to note
what opposer says, brief, 8-9:
The same wholesale distributors and dealers
carry both ELASTO-GEL and ELASTOPLAST or
ELASTOMULL products. Listings for ELASTO-
GEL and ELASTOPLAST products have appeared
side by side in the same distributor catalogs.
Thus, every opportunity exists for con-
fusion to occur from the concurrent use of the
marks on goods which are in part identical and
are sold through the same channels of trade to
the same class of customers.
Opposition No. 95,031
27
R. L. Simms
Administrative Trademark
Judge, Trademark Trial
and Appeal Board