Bracco Holding B.V.

Trademark Trial and Appeal Board

Feb 22, 2013

No. 85150700 (T.T.A.B. Feb. 22, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
February 22, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Bracco Holding B.V.
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Serial No. 85150700
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Stewart L. Gitler of Welsh Flaxman & Gitler LLC for Bracco Holding B.V.

Jeffrey S. DeFord, Trademark Examining Attorney, Law Office 115 (John Lincoski,
Managing Attorney).
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Before Zervas, Kuhlke and Kuzma, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Bracco Holding B.V., filed an application to register on the
Principal Register the mark DIADEM in standard characters for goods ultimately
identified as “contrast imaging agents for medical use,” in International Class 5. 1
Registration has been refused under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that applicant’s mark, when used with its identified
goods, so resembles the registered mark DIADEM in standard characters for
“dosimeter for patient dose measurements, namely, radiation dosimeter for

1 Application Serial No. 85150700, filed on October 12, 2010, based on an allegation of a
bona fide intention to use the mark in commerce, under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b).
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assessing therapeutic doses of radiation delivered to patients,” in International
Class 10,2 as to be likely to cause confusion, mistake or deception.
When the refusal was made final, applicant appealed. The appeal is fully
briefed.
When the question is likelihood of confusion, we analyze the facts as they
relate to the relevant factors set out 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 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the similarities between the marks
and the similarities between the goods or services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
The marks are identical “in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005) quoting du Pont, 177 USPQ at 567. Thus, we turn to consider the du
Pont factor of the relatedness of the goods. We base our evaluation on the goods as
they are identified in the registration and application. In re Dixie Restaurants Inc.,
105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Hewlett-Packard
Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and
Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). It is settled that it is not necessary that the

2 Registration No. 3916682, issued on February 8, 2011.
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respective goods be identical or even competitive in order to find that they are
related for purposes of our likelihood of confusion analysis. That is, the issue is not
whether consumers would confuse the goods themselves, but rather whether they
would be confused as to the source of the goods. See In re Rexel Inc., 223 USPQ 830
(TTAB 1984). The goods need only be sufficiently related that consumers would be
likely to assume, upon encountering the goods under similar marks, that the goods
originate from, are sponsored or authorized by, or are otherwise connected to the
same source. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
Finally, where the marks are identical the relationship between the goods need not
be as close to support a finding of likelihood of confusion as would be required in a
case where there are differences between the marks. In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687 (Fed. Cir. 1993).
The record establishes that applicant’s imaging agents are related to
registrant’s radiation dosimeters. The examining attorney has presented evidence
that contrast imaging agents and dosimeters are used “in the assessment,
diagnosing and treatment of disease, especially cancers.”3 Further, “applicant’s
description of goods is broad enough to encompass all kinds of contrast imaging
agents for medical use including radio-contrast and nuclear medicine agents.”4 In
fact, applicant states that its imaging agents are “for use by radiologists and

3 E. A. Br. p. 6; Final Office Action pp. 2-16 (see, e.g., www.e-radiography.net, “contrast
media are those which have an increased absorption of x-rays and show up as white/grey
and negative which have less absorption and show up as dark/grey”).

4 Id.
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echographists for diagnosis.”5 Moreover, dosimeters are used to assess or measure
radiation administered to a patient and contrast imaging agents that contain
radioactive material are used to improve the visibility of internal bodily structures
in X-ray based imaging techniques. Both goods are used in nuclear medicine
employing radionuclides in the diagnosis and treatment of disease with radioactive
materials. As stated by the examining attorney:
Dosimeters are used to determine both the dosage and saturation
levels of direct radiation treatment and chemo-therapy treatment in
cancer patients. Other contrasting agents are then used to see and
determine the results of the treatments by looking at the tumor size or
number of cancerous cells present and dosimeters are used to
determine radiation levels in both the patient and medicines. As
indicated above the applicant’s contrast imaging agents are used to see
organs and tissues and to determine function as well as locate disease
and determine the size and structure of tumors. They are also used
together with dosimeters to see and evaluate the effect of nuclear
medicine procedures, radiation, chemo treatments and nuclear
medicine treatments and therapies.6

Applicant’s various arguments with respect to the goods, simply point out the
differences between the goods and do not address the evidence of record showing the
related nature of these types of goods.
In view thereof, we find applicant’s identified goods to be closely related to
the registrant’s identified goods.
Further, because there are no limitations as to channels of trade or classes of
purchasers in the description of goods in the application and cited registration, it is
presumed that applicant’s and registrant’s goods move in all channels of trade

5 App. Br. p. 5.

6 E. A. Br. p 7; Final Office Action pp. 18-26 (see, e.g., www.radiology.rsns.org,
http://jnm.snmjournals.org).
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normal for those goods, and that they are available to all classes of purchasers for
those goods. See Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d
901, 177 USPQ 76 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119
USPQ 139 (CCPA 1958); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
Both goods are for medical purposes related to radiology and would be sold, at a
minimum, to medical professionals and medical facilities. Applicant argues that the
goods “are directed to a totally different set of highly sophisticated consumers who
are highly specialized in their professional skill set,” but there is no evidence to
support this position. As noted above, applicant’s identification is broad enough to
include contrast agents used in radiology which could be used by the same
personnel who are testing the radiation with a dosimeter.
Applicant’s argument that “the word ‘DIADEM’ has not reached any level of
distinctiveness to warrant a finding of confusion”7 is not supported by the evidence
of record. Applicant submitted three registrations for the mark DIADEM for vastly
different goods. First, third-party registrations do not prove that DIADEM is a
weak term. Absent evidence of actual use, third-party registrations have little
probative value because they are not evidence that the marks are in use on a
commercial scale or that the public has become familiar with them. See Smith
Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973)
(the purchasing public is not aware of registrations reposing in the U.S. Patent and
Trademark Office); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La
Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011). Moreover, to the extent

7 App. Br. p. 6.
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they could be probative as to the suggestiveness of the term, they are for disparate
goods and as such are not probative on this point. AMF Inc. v. American Leisure
Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973).
Applicant also notes that the USPTO allowed the cited registration over
applicant’s prior, now abandoned, application for the same mark and goods.
However, we are not bound by prior decisions of examining attorneys and the fact
that registrant’s mark was allowed to register over a prior application is not
determinative. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001); and In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994).
Applicant’s unsupported arguments that the sophistication of the particular
market obviates likely confusion, are not persuasive. While we find that based on
the identification of goods potential purchasers would exercise a higher degree of
care and would necessarily have some sophistication in the field of medical goods,
the record does not support a finding that the conditions of sale would outweigh the
other du Pont factors. As the examining attorney correctly observed, even
sophisticated purchasers are not necessarily immune from source confusion. In re
Cynosure, Inc., 90 USPQ2d 1644 (TTAB 2009); In re Decombe, 9 USPQ2d 1812
(TTAB 1988).
Despite the possible sophistication of potential purchasers of the respective
goods, we find that because the marks are identical, the goods are related, and the
channels of trade are the same or overlapping, confusion is likely between
applicant’s mark DIADEM and the mark DIADEM in the cited registration.
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Finally, to the extent that any of the points argued by applicant cast doubt on our
ultimate conclusion on the issue of likelihood of confusion, we resolve that doubt, as
we must, in favor of the prior registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
463, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register based on a likelihood of confusion under
Section 2(d) of the Trademark Act is affirmed.