Choice Spine, LP

Trademark Trial and Appeal Board

May 23, 2019

87728670 (T.T.A.B. May. 23, 2019)

Mailed: May 23, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
———
In re Choice Spine, LP
———
Serial No. 87728670
———
Robert O. Fox, Luedeka Neely Group PC, for Choice Spine, LP.
Susan A. Richards, Trademark Examining Attorney, Law Office 103, Stacy Wahl-
berg, Managing Attorney.
———
Before Taylor, Mermelstein, and Bergsman, Administrative Trademark
Judges.
Opinion by Mermelstein, Administrative Trademark Judge:
Choice Spine, LP, seeks to register TIGER SHARK (in standard characters) on the
Principal Register for “medical implants comprised of titanium alloy for use in spinal
stabilization.”1 Applicant appeals from the Examining Attorney’s final refusal to reg-
ister pursuant to Trademark Act § 2(d), 15 U.S.C. § 1052(d), on the ground that its

1 Filed December 20, 2017, alleging a bona fide intent to use the mark TIGERSHARK in com-
merce. Applicant subsequently filed (and the Office accepted) an amendment to allege use,
averring that the mark was first used and first used in commerce on April 1, 2018, and at the
This Opinion is not a
Precedent of the TTAB
Serial No. 87728670
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mark is likely to cause confusion in view of the registered mark SHARX (in standard
characters) for “[s]pinal implants composed of artificial material; [i]mplants of tita-
nium for the spine.”2
We affirm the refusal to register.
I. Applicable Law
Our determination under Trademark Act § 2(d) is based on an analysis of the pro-
bative facts in evidence that are relevant to the factors bearing on the issue of likeli-
hood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In considering the evidence, we keep in mind that “[t]he 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.” Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see In
re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
II. Evidence
The Examining Attorney made of record3 printouts from several webpages to
“demonstrate that the Applicant’s spinal implants composed of artificial material and
spinal implants made of titanium are available from the same source, under the same
brand name, and through the same channels of trade” and records “of third-party

same time amending the drawing to TIGER SHARK.
2 Registration No. 4931193, issued April 5, 2016.
3 Registration was initially refused on the additional grounds that the mark is deceptive and
merely descriptive, although these refusals were later withdrawn. We discuss only the evi-
dence relevant to the Trademark Act § 2(d) refusal.
Serial No. 87728670
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marks registered for use in connection with the same or similar goods . . . as those of
both applicant and registrant . . . show[ing] that the goods . . . listed therein, namely
implants comprised of titanium or artificial material for use in surgery for the spine
are of a kind that may emanate from a single source under a single mark.” Final Ofc.
Action (May 15, 2018).
Applicant proffered thirteen4 third-party registrations of marks comprising the
term SHARK or SHARC for various surgical instruments and devices. Applicant submits
these registrations as evidence under the sixth du Pont factor, “the number and na-
ture of similar marks in use on similar goods.” Req. for Recon. (Aug. 15, 2018).
Finally, requesting judicial notice, the Examining Attorney attached to her brief
definitions of “shark” and “tiger” (with a sub-entry for “tiger-shark”) from the Oxford
English Dictionary (2018); and definitions of “shark” and “tiger shark” from the
American Heritage Dictionary (2018). We grant the Examining Attorney’s request for
judicial notice, to which Applicant did not object. See In re Sarkli, Ltd., 721 F.2d 353,
220 USPQ 111, 113 n.6 (Fed. Cir. 1983).
III. Analysis
A. Similarity or dissimilarity and nature of the goods, trade
channels, and relevant purchasers
In comparing the goods in question, “[t]he issue to be determined . . . is not

4 We will disregard Reg. No. 3673190, which was cancelled on February 15, 2019. An expired
or cancelled registration is evidence of nothing but the fact that it once issued. Sunnen Prods.
Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987).
Serial No. 87728670
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whether the goods . . . are likely to be confused but rather whether there is a likeli-
hood that purchasers will be misled into the belief that they emanate from a com-
mon source.” Helene Curtis Indus. Inc. v. Suave Shoe Corp., 13 USPQ2d 1618, 1624
(TTAB 1989). It is not necessary that the parties’ goods be similar or even competitive
to support a finding of likelihood of confusion. It is sufficient if the goods are related
in some manner or that the conditions surrounding their marketing are such that
they would be encountered by the same persons under circumstances that could, in
light of the similarity of the marks, give rise to the mistaken belief that they come
from or are associated with the same source. In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1786 (TTAB 1993).
Applicant’s goods are:
Medical implants comprised of titanium alloy for use in spi-
nal stabilization.
The goods identified in the cited registration are:
[1] Spinal implants composed of artificial material; [2] Im-
plants of titanium for the spine.
(numbering added for reference).
We find that Applicant’s goods are identical to those identified in the second clause
of the registrant’s identification. Even if we assume that there are such things as non-
medical spinal implants, the Registrant’s “implants” must be construed to include all
implants, including the “medical implants” identified in the subject application. In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981) (“the scope of the registration encompasses
all goods of the nature and type described”). Likewise, the Registrant’s “implants . . .
for the spine” include the Applicant’s more specific “implants . . . for use in spinal
Serial No. 87728670
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stabilization,” because implants for “spinal stabilization” are obviously “for the
spine.” The only possible difference is that Applicant’s implants are made of “titanium
alloy,” while the Registrant’s are made of “titanium.” Although it is possible that ti-
tanium and titanium alloy may possess some functionally different characteristics
when used in spinal implants, there is nothing in this record to suggest that is the
case, let alone that any such differences would render these goods dissimilar in any
way meaningful to our inquiry. Based on “the text of the [application and] registra-
tion[ ] alone,” Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 63 USPQ2d 1303,
1310 (Fed. Cir. 2002), we find that Applicant’s goods are identical to those identified
in the second clause of the cited registrant’s goods.
The Examining Attorney submitted internet evidence and third-party registra-
tions in an effort to show that Applicant’s “titanium alloy” implants are related to the
implants of “artificial material” in the first clause of the Registrant’s identification,
and travel in the same channels of trade. However, it is not clear from the record
what is meant by “artificial” in the context of spinal implants. For instance, the Ex-
amining Attorney’s internet evidence shows the marketing of spinal implants made
of PEEK, a polymer alongside those made of titanium alloy. But it is not clear why
titanium would be considered any less (or more) “artificial” than PEEK, since neither
is normally found in the human spine. It is possible that in the field of spinal im-
plants, an “artificial” implant is one comprised of anything other than human (or pos-
sibly animal) tissue. If so, Applicant’s goods are encompassed by the first clause of
the Registrant’s identification because “titanium alloy” is an “artificial material.”
Serial No. 87728670
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Nonetheless, the record is not clear on this point and neither Applicant nor the Ex-
amining Attorney addressed it in their briefs. But we need not speculate because Ap-
plicant’s goods are identical to those in the registrant’s second clause, and registra-
tion must be refused if confusion is likely with respect to any of the registrant’s goods.
See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015), aff’d, 866 F.3d
1315, 123 USPQ2d 1744 (Fed. Cir. 2017).
The identity of those goods strongly supports a finding of a likelihood of confusion.
B. The similarity or dissimilarity of established, likely-to-continue
trade channels
The fact that we have found Applicant’s goods identical to those of the cited regis-
trant raises a presumption that they travel in the same channels of trade to the same
purchasers. In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA
1968); see In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)
(even though there was no evidence regarding channels of trade and classes of con-
sumers, the Board was entitled to rely on this legal presumption in determining like-
lihood of confusion).
This du Pont factor supports a conclusion that confusion is likely.
C. Similarity or dissimilarity of the marks
In a likelihood of confusion analysis, we compare the marks in their entireties for
similarities and dissimilarities in appearance, sound, connotation, and commercial
impression. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). “The proper test is not
Serial No. 87728670
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a side-by-side comparison of the marks, but instead whether the marks are suffi-
ciently similar in terms of their commercial impression such that persons who en-
counter the marks would be likely to assume a connection between the parties.”
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1377, 101 USPQ2d 1713,
1721 (Fed. Cir. 2012) (citation and internal quotation marks omitted).
We begin with Applicant’s complaint that the Examining Attorney has miscon-
strued the cited mark:
[T]he cited mark is not SHARX, but is sharx. A copy of US
Registration No. 4,931,193 is attached. The Examining At-
torney failed to consider this difference.
Reply Br., 13 TTABVUE 2.
The Examining Attorney was right to disregard the difference between upper- and
lower-case letters in this instance. “[T]he argument concerning a difference in type
style is not viable where one party asserts rights in no particular display.” Squirtco
v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983). Although the
drawing in the cited registration depicts the mark as sharx, in lower-case letters, the
registrant is not limited to use of its mark in that form. As noted on the registration
certificate supplied by Applicant, “the [cited] mark consists of standard characters
without claim to any particular font, style, size, or color.” Reg. No. 4931193. Because
it is registered in “standard characters,” the registration covers display of the cited
mark in any style of lettering, including lower-case letters, upper-case letters, or a
Serial No. 87728670
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combination of them.5 See In re Viterra, 101 USPQ2d at 1909; Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000). We accordingly
consider Applicant’s mark to be identical in stylization to the Registrant’s mark.6
Applicant’s mark is TIGER SHARK and the mark in the cited registration is SHARX.
The cited mark is phonetically identical to the plural of the word SHARK in Applicant’s
mark, and would likely be perceived as a variant spelling of it. See Flow Tech. Inc. v.
Picciano, 18 USPQ2d 1970, 1972 (TTAB 1991) (“Opposer’s mark is spelled with a final
letter “k.” Applicant’s is spelled with a final letter “x” which causes applicant’s mark
to sound like the plural of opposer’s, OMNITRAK and OMNITRAX.”). Applicant agrees
that “[t]he term SHARX is phonetically similar to SHARKS, which is plural.” App. Br., 7
TTABVUE 3. The words SHARK and SHARX are therefore identical in appearance but
for the last letter, and virtually identical in sound and meaning. See In re Cordua
Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1637 (Fed. Cir. 2016) (“While each
trademark must always be evaluated individually, pluralization commonly does not
alter the meaning of a mark.”); In re Belgrade Shoe Co., 411 F.2d 1352, 162 USPQ
227, 227 (CCPA 1969) (“[I]n sound, the appellant’s mark differs from the registered
mark primarily in that the former is the plural form of the latter, which we feel does

5 Moreover, because Applicant also made a standard-character claim in its application, the
applied-for registration would likewise cover depictions of TIGER SHARK in any font, style, size,
or color, including those used by the cited registrant. Thus, even if the cited registration cov-
ered use of the registered mark only in lower-case characters, the registration Applicant
seeks would cover similar use of Applicant’s mark.
6 We will follow our usual convention in depicting both standard-character marks in upper-
case letters. In re Calphalon Corp., 122 USPQ2d 1153, 1154 n.1 (TTAB 2017) (“Our presen-
tation of the mark in all uppercase letters reflects the fact that a term registered as a mark
in ‘standard character’ form is not limited to any particular font style, size, or color.”).
Serial No. 87728670
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not amount to a material difference in a trademark sense.”). There is no indication
that prospective purchasers would distinguish the marks at issue on the basis that
Applicant’s mark is singular, while the cited mark is a misspelled (or alternatively
spelled) plural.
Of course, Applicant’s mark is not SHARK, but TIGER SHARK, and our conclusion on
registrability must rest on consideration of the marks in their entireties. In re
Hutchinson Tech. Inc., 852 F.2d 552, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988). That
Applicant’s mark includes the word TIGER distinguishes it somewhat in appearance
and pronunciation from the cited mark, but does little to distinguish it in meaning.
As the Examining Attorney’s evidence makes clear, a “tiger shark” is a species of
“shark.” 12 TTABVUE 4 (definition of “tiger shark”). As a result, Applicant’s mark,
considered as a whole, is not significantly different in meaning from the cited SHARX
mark, because a TIGER SHARK is a shark. Applicant agrees that its “mark connotes a
specific type of shark.” See App. Br., 7 TTABVUE 3. Although Applicant urges that
its mark has a different connotation than the cited mark, id., we find them highly
similar in meaning. By definition, the connotation of TIGER SHARK is that of a shark.
Considered in their entireties, we find Applicant’s mark to be highly similar in
connotation and substantially similar in appearance and pronunciation to the mark
in the cited registration. This du Pont factor supports a finding that confusion is
likely.
D. Strength of the prior mark
Applicant argues that when one considers “the sixth du Pont factor, the number
Serial No. 87728670
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and nature of similar marks in use on similar goods, it becomes further evident that
the consuming public is exposed to third-party use of similar marks on similar goods,
further weighing against a likelihood of confusion.” App. Br., 7 TTABVUE 4. As evi-
dence of such “use,” Applicant made of record twelve live third-party registrations,
which Applicant contends “are relevant to show that the cited mark is relatively weak
and entitled to only a narrow scope of protection.” Id. (citing Palm Bay, 73 USPQ2d
at 1693).
Mark Reg. No. Goods
SHARK-O 5306558 Charcot orthosis for a foot.
LAPRO-SHARK & d 5187452 Surgical instruments and apparatus; Surgical instruments,
namely, sewing needles.
THE SHARK FIN 5012630 Medical device for treating tendonitis.
LAPRO-SHARK 4989369 Surgical instruments and apparatus; Surgical instruments,
namely, sewing tool.
SHARKCORE 4697316 Surgical instruments and apparatus; biopsy instruments;
medical instruments for use in performing biopsies; nee-
dles for medical purposes.
SHARK & d 4686323 Endoscopic apparatus and instruments used in urology,
namely, resectoscopes.
SHARC FT & d 4442868 Surgical apparatus and instrument, namely, orthopedic de-
vice for implanting a shoulder
SPINE SHARK 4391256 Spinal traction and alignment device, used to relieve pos-
tural mechanical pain.
SHARC & d 3918836 Surgical devices, namely, cannulae.
SHARC 3918835 Surgical devices, namely, cannulae.
TOOTHLESS SHARK 3602454 Surgical instruments for use in orthopedic surgery.
BONE SHARK 3316123 Medical devices, namely orthopedic bone grinding devices.
We disagree that the third-party registrations are evidence that the cited regis-
tration is weak. As Applicant recognizes, the sixth du Pont factor concerns “[t]he
number and nature of similar marks in use on similar goods.” Du Pont, 177 USPQ at
567 (emphasis added), quoted in App. Br., 7 TTABVUE 4. “The probative value of
third-party trademarks depends entirely upon their usage.” Palm Bay, 73 USPQ2d at
Serial No. 87728670
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1693 (emphasis added). The problem with Applicant’s third-party registrations is
“that, in the absence of evidence of the extent of actual continuing use of registered
marks, mere registrations are entitled to little weight in establishing whether there
is likely to be confusion because registrations by themselves do not indicate how the
public mind may have been conditioned.” Stanadyne, Inc. v. Lins, 490 F.2d 1396, 180
USPQ 649, 649 (CCPA 1974) (citing AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d
1403, 177 USPQ 268 (CCPA 1973)). Absent evidence of 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. Registrations
are of “little evidentiary value” in determining whether customers perceive trade-
marks as weak because “[t]he purchasing public is not aware of registrations reposing
in the Patent [and Trademark] Office.” Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476
F.2d 1004, 177 USPQ 462, 462‒63 (CCPA 1973). “As to strength of a mark . . . regis-
tration evidence may not be given any weight.” Olde Tyme Foods, Inc. v. Roundy’s,
Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992).
While registrations alone are not evidence of commercial weakness, they may be
used in the manner of a dictionary to show that the registered mark (or a part of it)
is inherently weak in that it is suggestive or descriptive of the relevant goods or ser-
vices. E.g., Institut National Des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d
1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992). But that does not help Applicant here;
none of the proffered registrations was registered with a disclaimer of SHARK or SHARC,
subject to a claim of acquired distinctiveness, or on the Supplemental Register. Nor
Serial No. 87728670
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does Applicant suggest — and it does not appear to us — that the term “shark” (or
variations of it) has any descriptive or suggestive meaning with respect to the goods
in the registrations, or with respect to Applicant’s own goods or those of the cited
registrant. As a result, “[a]ll that the third-party registrations demonstrate is that
their owners believe the term [SHARK or SHARC] to be appropriate for a trademark. . . .”
Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406, 407 (CCPA 1967).
“As will be appreciated,” Applicant posits, pointing again to the third-party regis-
trations, “the Trademark Office has determined that the cited mark SHARX for spinal
implants is not confusingly similar to the foregoing earlier registered marks for
highly related goods, and that such marks are not confusingly similar.” App. Br., 7
TTABVUE 5. To the contrary, all that we are able to discern is that the third-party
marks are registered. While we do not suggest that any mistake was made in their
registration, “the existence of confusingly similar marks already on the register will
not aid an applicant to register another confusingly similar mark.” Lilly Pulitzer, 153
USPQ at 407 (citing In re Helene Curtis Indus., Inc., 305 F.2d 492, 134 USPQ 501
(CCPA 1962)). In any event, the issue before us is the registrability of Applicant’s
mark in view of the cited registration, not the registrability of the cited registration
vis-à-vis the third-party registrations. See In re Nett Designs, Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some char-
acteristics similar to Nett Designs’ application, the PTO’s allowance of such prior reg-
istrations does not bind the Board or this court.”); cf. In re Shinnecock Smoke Shop,
Serial No. 87728670
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571 F.3d 1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009) (“Applicant’s allegations re-
garding similar marks are irrelevant because each application must be considered on
its own merits.”).
We conclude that the mark in the cited registration is arbitrary — and not sug-
gestive — and that it is not commercially weak. This factor favors a finding that con-
fusion is likely.
E. The conditions under which and buyers to whom sales are
made
Applicant argues that “the goods are spinal implants. These are not goods that
are casually purchased at a counter or on the internet or the like. These are special-
ized goods purchased by sophisticated and discerning medical professionals.” App.
Br., 7 TTABVUE 5; see du Pont, 177 USPQ at 567 (factor four). Applicant’s argument
is not supported by evidence. See Galen Med. Assocs., Inc. v. United States, 369 F.3d
1324, 1339 (Fed. Cir. 2004) (“Statements of counsel . . . are not evidence.”); Martahus
v. Video Duplication Servs. Inc., 3 F.3d 417, 27 USPQ2d 1846, 1849 (Fed. Cir. 1993)
(“mere attorney arguments unsubstantiated by record evidence are suspect at best”).
Applicant does not elaborate on the identity of the “medical professionals” who
allegedly purchase the goods. We suppose that they may be surgeons, but they also
may be others who purchase medical supplies on behalf of surgeons or hospitals. See
Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1163 (Fed. Cir. 2014) (where the purchaser class is mixed, the Board considers
the likelihood of confusion from the perspective of “the least sophisticated potential
purchasers”). Without an explanation, supported by evidence, of how the goods are
Serial No. 87728670
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purchased and by whom, we cannot give much credence to Applicant’s suggestion that
the relevant buyers and conditions of sale mitigate any likelihood of confusion. While
we agree that these goods are by their nature unlikely to be the subject of impulse
purchases, we will not speculate further. That said, even if Applicant’s unsupported
argument is credited, purchaser sophistication does not always result in a finding
that confusion is not likely, especially where marks and goods are similar. Weiss As-
socs. v. HRL Assocs., 902 F.2d 1546, 14 USPQ2d 1840, 1841–42 (Fed. Cir. 1990); Win-
charger Corp. v. Rinco, Inc., 297 F.2d 261, 132 USPQ 289, 292 (CCPA 1962). “That
the relevant class of buyers may exercise care does not necessarily impose on that
class the responsibility of distinguishing between similar trademarks for similar
goods. ‘Human memories even of discriminating purchasers . . . are not infallible.’ ”
In re Research & Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986)
(quoting Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168
USPQ 110, 112 (CCPA 1970)).
While we do not consider the goods to be impulse purchases, Applicant has pro-
vided no further information relevant to this du Pont factor. We accordingly find this
factor to be neutral or weigh slightly in Applicant’s favor.
IV. Conclusion
We have considered all the evidence and argument of record. For the foregoing
reasons, we find that Applicant’s goods are identical to some of the goods in the cited
registration, and that they move in the same channels of trade to the same prospec-
tive purchasers. We find Applicant’s mark to be substantially similar in appearance
Serial No. 87728670
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and pronunciation and highly similar in connotation to the mark in the cited regis-
tration. Although the marks are not identical, “[w]hen trademarks would appear on
substantially identical goods, ‘the degree of similarity necessary to support a conclu-
sion of likely confusion declines.’ ” Coach Servs. Inc., 101 USPQ2d at 1722 (quoting
Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1260
(Fed. Cir. 2011)). We find the cited mark to be arbitrary, and not inherently or com-
mercially weak. Finally, we find that the goods at issue are not likely to be subject to
impulse purchases, although any weight this adds to Applicant’s side of the scale is
outweighed by the similarity of the marks and goods, and the other factors discussed.
On balance, we conclude that confusion is likely.
Decision: The refusal to register under Trademark Act § 2(d) is affirmed.