Center for Medical Surgical Hair Restoration P.C.

Trademark Trial and Appeal Board

Jun 20, 1997

EX (T.T.A.B. Jun. 20, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB June 23, 1997
Paper No. 10
EJS
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Center for Medical Surgical Hair Restoration P.C.
________
Serial No. 74/606,674
_______
Mark A. Cantor of Brooks & Kushman P.C. for Center for
Medical Surgical Hair Restoration P.C.
David H. Stine, Trademark Examining Attorney, Law Office 103
(Kathryn Erskine, Managing Attorney)
_______
Before Seeherman, Hanak and Hohein, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Center for medical Surgical Hair Restoration P.C. has
appealed from the Trademark Examining Attorney's final
refusal to register the mark LASER MICROGRAPH for "surgical
hair transplantation services."1 Registration has been
refused pursuant to Sections 2(e)(1) and 2(d) of the
Trademark Act, 15 U.S.C. ''1052(e)(1) and 1052(d), on the
grounds that applicant's mark is merely descriptive of its
identified services, and that it so resembles the mark

1 Application Serial No. 74/606,674, filed December 5, 1994,
and asserting a bona fide intention to use the mark in commerce.
Ser No. 74/606,674
2
MICROGRAFT, previously registered for hair transplantation
services,2 that, if used in connection with applicant's
identified services, is likely to cause confusion or mistake
or to deceive.
The case has been fully briefed, but an oral hearing
was not requested.
We turn first to the refusal that LASER MICROGRAPH is
merely descriptive of surgical hair transplantation
services. Applicant contends that MICROGRAPH has no
relationship whatsoever to applicant's services, citing the
following definition of "micrograph" taken from Webster's
Third New International Dictionary (8 1976):
1. an instrument for executing minute
writing or engraving;
2. a graphic reproduction of the image
of an object or part of an object formed
by a microscope;
3. an instrument for measuring minute
movements by the magnified record of
movements of a diaphragm
The Examining Attorney, on the other hand, argues that
when the mark is viewed in the context of applicant's
services, it is merely descriptive because it directly
describes the method or technique used in performing hair
transplantation services. In support of this position, the
Examining Attorney has submitted two abstracts taken from
the MEDLINE database in the NEXIS system. The first

2 Registration No. 1,137,700, issued July 8, 1980; Section
Ser No. 74/606,674
3
abstract, which describes an article in the "Singapore
Medical Journal," (Aug. 1990), is quoted in full below:
Dermatologic surgery is of increasing
interest to both dermatologists and
other medical practitioners. It
includes procedure [sic] like biopsy,
excisional surgery, laser surgery,
electrosurgery, curettage surgery, nail
surgery, cryosurgery, minigrafting,
sclerotherapy, collagen implant, punch
grafting, Moh's micrographic surgery,
dermabrasion and hair transplant. This
article highlights the important aspects
of the various procedures and some of
the more important practical points.
The second abstract, also quoted in full, refers to an
article in the "Journal of Dermatology Surgery Oncology,"
(Mar. 1990):
Representations of the anatomic surface
location of cutaneous lesions and the
surgical procedures performed on these
lesions can be transferred to the
medical charts using simple anatomic
rubber stamps (ARS) of the body. The
technique is exemplified with symbols to
represent surgical excision, chemical
face peel, dermabrasion, micrographic
surgery, and the harvesting of flaps and
grafts. ARS are also useful in
liposuction surgery, punch grafts for
pitted facial scars, hair
transplantation, sclerotherapy, laser
surgery, and other cosmetic dermatologic
procedures. ARS are particularly
valuable in micrographic surgery for
skin cancer because they help document
the depth and breadth of cancer invasion
and aid in the follow-up of recurrent
skin cancer, especially when defects are
reconstructed.

affidavit accepted.
Ser No. 74/606,674
4
After carefully reviewing this evidence, we find that
the Office has not met its burden of demonstrating that the
term LASER MICROGRAPH is merely descriptive of surgical hair
transplantation services. Although the abstracts indicate
that dermatologic surgery includes micrographic surgery and
that hair transplantation is one kind of cosmetic
dermatologic procedure, there is nothing in these abstracts
which show that micrographic surgery is used in hair
transplantation. On the contrary, both abstracts list hair
transplantation as a separate procedure from micrographic
surgery.
Thus, because MICROGRAPH has not been shown to describe
services involved in surgical hair transplantation, we find
that LASER MICROGRAPH is not merely descriptive of such
services, and reverse the refusal to register on this
ground.
This brings us to the refusal on the ground that LASER
MICROGRAPH for surgical hair transplantation surgery is
likely to cause confusion with MICROGRAFT for hair
transplantation services. Applicant's identified services
are encompassed within the registrant's hair transplantation
services, and the services must therefore be considered
legally identical. As such, they must be deemed to be
offered in the same channels of trade to the same classes of
consumers.
Ser No. 74/606,674
5
Turning to a consideration of the marks, we begin with
the principle that when marks would appear on virtually
identical goods or services, the degree of similarity
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). Applicant's mark contains the word MICROGRAPH, which
is very similar in appearance to MICROGRAFT, and is almost
identical in pronunciation. Applicant's mark does, of
course, begin with the word LASER, which is totally absent
from the cited mark. However, because lasers are used in a
variety of medical and surgical procedures, consumers are
not as likely to regard this portion of applicant's mark as
a source-identifying feature. Thus, while we have compared
the marks in their entireties, we believe it appropriate to
give more weight to the word MICROGRAPH in applicant's mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985) ("In articulating reasons for reaching
a conclusion on the issue of likelihood of confusion, there
is nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature
of a mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties.")
Applicant argues that the marks differ in connotation,
and that because of this difference confusion is not likely.
Ser No. 74/606,674
6
Applicant bases this position on the dictionary definition
for "micrograph" recited above, and the definition, taken
from the same dictionary, of "micrograft" as "a composite
plant produced by micrografting," which is further defined
as "the operation of engrafting a weak plant (as a hybrid
embryo) on a related but more vigorous stock."
We are not persuaded by this argument. We think that
the majority of consumers of applicant's and the
registrant's services (presumably those members of the
general public who have suffered hair loss) are not likely
to be aware of these definitions, and therefore will not
distinguish the marks based on these meanings. Moreover,
any differences in connotation are far outweighed by the
similarities in appearance and pronunciation.
Applicant also appears to argue that the registered
mark is weak, and entitled to a limited scope of protection.
Applicant bases this argument on a dictionary definition of
"graft" which it has submitted with its appeal brief.3
Applicant cites specifically the definition "to join or to
fasten as if by grafting so as to bring about a close
union." We also note an additional definition of graft:
"to implant (living tissue) so as to form an organic union
(as in a lesion) ."
These definitions show that MICROGRAFT is highly
suggestive of hair transplantation services. However, even
highly suggestive marks are entitled to protection. Thus,
even though the registrant's mark may have a limited ambit
of protection, in this case we find that applicant's mark
LASER MICROGRAPH, when used on the legally identical
services, falls with the scope of protection to be accorded
the registrant's mark. In saying this, we are also mindful
of the well-established principle that, if there be doubt on
the issue of likelihood of confusion, it must be resolved
against the newcomer or in favor of the prior user or
registrant. In re Pneumatiques, Caoutchouc Manufacture et
Plastiques Kleber-Colombes, 487 F.2d 918, 179 USPQ 729 (CCPA
1973). In this case, the registrant obtained its
registration in 1980, based on a claimed first use in 1978,
while applicant's application does not indicate that it has
yet begun to use its mark.
Decision: The refusal on the ground of mere
descriptiveness is reversed; the refusal on the ground of
likelihood of confusion is affirmed.
E. J. Seeherman

dictionary definitions. See Marcal Paper Mills, Inc. v.
Ser No. 74/606,674
8
E. W. Hanak
G. D. Hohein
Administrative Trademark Judges
Trademark Trial and Appeal Board

American Can Co., 212 USPQ 852 (TTAB 1981).