Genzyme Corp.

Trademark Trial and Appeal Board

Jun 11, 2002

No. 75805820 (T.T.A.B. Jun. 11, 2002)

6/11/02 Paper No. 15

GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
_______

In re Genzyme Corp.
_______

Serial No. 75/805,820
_______

Lawrence R. Robins of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P. for Genzyme Corp.

Brian A. Rupp, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Hohein, Walters and Rogers, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Genzyme Corp. has filed an application to register the
mark "SEPRAMESH" for "coated mesh for surgical procedures
including hernia repair."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant's mark, when used in connection with its goods,

1 Ser. No. 75/805,820, filed on September 22, 1999, which is based on
an allegation of a bona fide intention to use such mark in commerce.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/805,820
2
so resembles the mark "SUPRAMESH," which is registered for
"nylon in mesh form used as an implant in plastic surgery,"2 as
to be likely to cause confusion, mistake or deception.
Applicant has appealed. Briefs have been filed,3 but
an oral hearing was not requested. We reverse the refusal to
register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a
likelihood of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973). However, as

2 Reg. No. 1,896,905, issued on May 30, 1995, which sets forth a date
of first use anywhere and first use in commerce of December 12, 1994;
affidavit §8 accepted and affidavit §15 acknowledged.

3 The Examining Attorney, citing Trademark Rule 2.142(d), states in his
brief that he "objects to the applicant's inclusion of additional
evidence with the appeal brief." Applicant, in its reply brief,
argues that the "objection to new evidence is unfounded," correctly
noting that "the Examining Attorney fails to identify the
objectionable 'new' evidence" and asserting that "all of the evidence
... submitted with the Appeal Brief appears in either the August 6,
2001 or July 31, 2000 Responses." While the documents, or the
information contained therein, which constitute Exhibits A through C
to applicant's appeal brief (consisting of copies of registrant's
advertising for its "SUPRAMESH" nylon mesh sheets and implants and
copies of applicant's registrations for marks which include the
formative "SEPRA") have indeed previously been made of record, the
document which is labeled Exhibit D to applicant's appeal brief
(consisting of information concerning an application filed by
applicant for the mark "SEPRA!" in stylized form) is new evidence and
accordingly has been excluded pursuant to Trademark Rule 2.142(d) as
technically untimely. Nevertheless, given the limited probative value
of the latter (since it evidences only the fact that such an
application was filed), it seems unnecessary to have raised an
objection to inclusion in the record of evidence which makes
absolutely no difference in the outcome of this appeal.
Ser. No. 75/805,820
3
indicated in Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), two key considerations
in any likelihood of confusion analysis are the similarity of
the goods and the similarity of the marks.4
Turning first, therefore, to consideration of the
respective goods, applicant argues that registrant's "SUPRAMESH"
"nylon in mesh form used as an implant in plastic surgery" is a
product which is "used by specialized surgeons, namely[,]
plastic surgeons"; is "similar to nylon mesh pantyhose"; and is
"used as an implant in mentoplasty augmentation (chin
augmentation) and other plastic surgery." Applicant insists,
however, that "[a] mesh the size of registrant's product is too
small to be used in the hernia repair procedure in which
Applicant's SEPRAMESH product is used."
By contrast, applicant asserts that "a coated mesh
such as Applicant's would never be used as an implant in plastic
surgery" as is registrant's product. Instead, applicant
contends that its "coated mesh for surgical procedures including
hernia repair" is a product which is "used by general surgeons
in surgical procedures that are not cosmetic in nature,
including hernia repair." Specifically, applicant maintains
that its "SEPRAMESH biosurgical composite is a dual-component

Ser. No. 75/805,820
4
(absorbable and nonabsorbable), sterile prosthesis designed for
the reconstruction of soft tissue deficiencies and for the
reduction of adhesion formation to the prosthesis." "The coated
side of the SEPRAMESH product," applicant notes, "remains in
place (in the abdomen) for up to seven (7) days, separating the
abdominal viscera while an adhesion-resistant mesothelial cell
layer develops over the peritoneal side of the prosthesis."
Such a composite design, applicant further observes, "encourages
complete tissue ingrowth of the polypropylene mesh with the
abdominal wall."
Applicant concludes, therefore, that the respective
goods are so different in their design and use that confusion as
to their source or affiliation is unlikely, stating in summary
that (italics in original):
Applicant's product consists of a
specialized surgical mesh having a non-
bioabsorbable layer and an absorbable
layer, which unlike registrant's product,
when used prevents bowel tissue adhesion to
the prosthesis. If the bowel is adhered to
the prosthesis, this may lead to life
threatening complications such as bowel
obstruction and fistulas. In contrast,
registrant's product consists of a non-
bioabsorbable nylon mesh which is placed on
the body of the patient and promotes tissue
adhesion in the body of a patient.

4 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in the marks."
Ser. No. 75/805,820
5
As to the evidence of record retrieved from website
and "NEXIS" searches, from which the Examining Attorney asserts
that hernia repair, like plastic surgery, is typically performed
by plastic surgeons and thus there exists an overlap of
purchasers for applicant's and registrant's products, applicant
contends that:
The Examining Attorney misconstrues the
search results. Hernia repair is not
performed by plastic surgeons. Plastic
surgeons perform surface abdominal surgery
to "alleviate health problems, such as ...
hernia." A general surgeon, not a plastic
surgeon, performs surgical procedures deep
in the abdominal cavity to repair hernias.

However, as properly pointed out by the Examining
Attorney in his brief, it is well settled that the goods at
issue need not be identical or even competitive in nature in
order to support a finding of likelihood of confusion. It is
sufficient, instead, that the goods are related in some manner
and/or that the circumstances surrounding their marketing are
such that they would be likely to be encountered by the same
persons under situations that would give rise, because of the
marks employed in connection therewith, to the mistaken belief
that they originate from or are in some way associated with the
same entity or provider. See, e.g., Monsanto Co. v. Enviro-Chem
Corp., 199 USPQ 590, 595-96 (TTAB 1978) and In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Ser. No. 75/805,820
6
Furthermore, it is well established, as the Examining
Attorney correctly observes in his brief, that the issue of
likelihood of confusion must be determined on the basis of the
goods as they are set forth in the involved application and the
cited registration. See, e.g., Canadian Imperial Bank of
Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815-16 (Fed. Cir. 1987); CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198, 199 (Fed. Cir. 1983); Squirtco v. Tomy
Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983); and
Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473
F.2d 901, 177 USPQ 76, 77 (CCPA 1973). Thus, where the goods in
the application at issue and in the cited registration are
broadly described as to their nature and type, it is presumed
that in scope the application and registration encompass not
only all goods of the nature and type described therein, but
that the identified goods move in all channels of trade which
would be normal therefor and that they would be purchased by all
potential buyers thereof. See, e.g., In re Elbaum, 211 USPQ
639, 640 (TTAB 1981).
We are therefore constrained to agree with the
Examining Attorney that, as identified in the respective
application and registration, applicant's "coated mesh for
surgical procedures including hernia repair" encompasses
products which are identical and closely related to registrant's
Ser. No. 75/805,820
7
"nylon in mesh form used as an implant in plastic surgery," and
vice versa, such as coated mesh for use as an implant in plastic
surgery and a nylon mesh implant for surface abdominal hernia
repair. As the Examining Attorney properly points out in his
brief (italics in original):
Despite applicant's ... claims that the
applicant's goods are used by "general
surgeons" whereas the registrant's goods are
used by "plastic surgeons," ... the simple
fact is that the applicant's goods are
identified as "coated mesh for surgical
procedures," without any limitation as to
the type of surgeons who will use the
product. The only qualifying language
applicant has been willing to add to the
identification of goods, with regards to the
purpose of its coated mesh for surgical
procedures[,] is that it may be used for
"hernia repair." Because applicant has used
the vague word "including" in its
identification of goods, the only logical
interpretation is that this "coated mesh"
may be used for any "surgical procedures,"
which may or may not include "hernia repair"
depending on the consumer's medical needs.
.... Since the identification of the
applicant's goods is very broad, it is
presumed that the application encompasses
all goods of the type described, including
those in the registrant's ... identification
[of goods], that they move in all normal
channels of trade and that they are
available for all potential customers.

Although applicant, in its reply brief, emphasizes
that its "SEPRAMESH product is composed of mesh material and
coatings that are substantially different from those used by the
Registrant in its SUPRAMESH product," such specific
Ser. No. 75/805,820
8
compositional differences (as opposed to the generalized
restriction of applicant's product to a "coated mesh" and
registrant's product to a "nylon" form of mesh) are not
reflected in the identifications of the respective goods and
thus are legally irrelevant for purposes of determining whether
confusion is likely. Applicant also asserts in its reply that:
The correct reading of Applicant's
description is that its product is used in
surgical procedures that include hernia
repair. The words "including" and "that
include" are equally specific and
interchangeable. The Examining Attorney's
interpretation, namely that the use of
"including hernia repair" is a non-
exhaustive list of possible uses for
Applicant's product, is wrong and finds no
support in the record. There is no
suggestion in any of the materials filed by
Applicant that the product is for use in
connection with all surgical procedures--
particularly plastic surgery. ....

Had applicant desired to limit the identification of its product
along the above lines, such as setting it forth as a "coated
mesh for surgical procedures involving hernia repair," it could
of course have done so, but the fact remains that it did not.
We concur with the Examining Attorney that a reasonable reading
of the identification of applicant's goods is one in which the
uses thereof includes plastic surgical procedures, as well as
general ones, and encompasses procedures not involving hernia
repair.
Ser. No. 75/805,820
9
Moreover, as the Examining Attorney persuasively notes
in his brief, "even if the applicant were to limit its
identification of goods ... by stating that its goods were only
used in 'hernia repair,' or were only used by 'general'
surgeons,'" it is still the case that, as shown by the evidence
of record, "[t]he goods herein are mesh products used in
surgical procedures." Applicant's goods would in legal
contemplation thus remain either identical in part or otherwise
closely related to respondent's broadly identified product,
which includes nylon in mesh form used as an implant in plastic
surgical hernia repair. Contrary, furthermore, to applicant's
contentions that "[t]he Examining Attorney misconstrues the
search results" and that "[h]ernia repair is not performed by
plastic surgeons," the record does indeed demonstrate, as
illustrated by the representative samples set forth below, that
plastic surgeons perform certain kinds of hernia repairs
(emphasis added):
"Procedures That May be Covered by
Insurance*
Abdominal surgery, when it is performed
to:
• Alleviate health problems, such as
back pains, sores rashes, hernia" --
http://www.plasticsurgery.org/surgery/totalp
c.htm, January 24, 2001 (website devoted to
topic of "Plastic Surgery and Total Patient
Care");

"The repair of ventral hernia defects
of the abdominal wall challenges both
Ser. No. 75/805,820
10
general and plastic surgeons." -- Plast.
Reconstr. Surg., February 2000;

"For all these reasons, the authors
warmly recommend it for plastic surgery in
all incisional hernias ...." -- Chirurgia
(Bucur), September-October 1998 (article
headlined "The use of Plastex-type synthetic
mesh in the surgery of abdominal wall
defects");

"A group of 20 patients underwent
plastic surgery for inguinal hernia." --
Minerva Chir., May 1998;

"Abdominal wall competence is a major
concern of all plastic surgeons using the
TRAM flap for breast reconstruction. Low
hernia rates and adequate abdominal
stability are standard expectations in
abdominal wall closure. Described here is
this institution's experience with the use
of a large piece of synthetic mesh ...." ."
-- Plast. Reconstr. Surg., March 1998;

"The employment of prosthesis in
abdominal plastic surgery for incisional
hernia has contributed to a remarkable
improvement in the results of this surgery."
-- G. Chir., October 1997; and

"Lost to followup for a couple of
years, the patient again came in for
treatment of his abdominal hernia to the
plastic surgical service at Grady Memorial
Hospital ...." -- Ann. Plast. Surg., August
1985.

Accordingly, in light of the evidence of record and the manner
in which applicant's and registrant's products are identified,
the respective goods must be considered as being identical in
part and otherwise closely related, such that if marketed under
Ser. No. 75/805,820
11
the same or substantially similar marks, confusion as to the
origin or affiliation of the goods would be likely to occur.
Turning, therefore, to consideration of the marks at
issue, the Examining Attorney maintains that "these marks are
extremely similar in appearance, differing by only a single
letter,"5 and that "these marks could even be pronounced the
same." In particular, the Examining Attorney contends that:
The marks in question are SUPRAMESH and
SEPRAMESH. The marks are identical, save
for the "u" and the "e" in the S_PRA
portions of the marks. Each of these marks
ends with the identical MESH portion. Like
the MESH portions, the S_PRA portions of the
marks could be pronounced the same. A
slightly different pronunciation can be made
between the "u" and the "e" in the S_PRA
portions of the marks. However, this
distinction is negligible. When spoken in
normal usage, the average speaker is not
likely to hear the distinction between SEPRA
and SUPRA, particularly where the terms come
at the beginning of the marks and are
followed by further sounds, namely MESH,
which tend to blur the first sounds
pronounced. It is important to remember
that the focus is on the recollection of the
average purchaser who normally retains a
general, rather than specific, impression of
trademarks. Thus, where consumers will hear
an "s" sound followed by PRAMESH, confusion

5 While applicant makes much of the fact that, as shown by the copy of
registrant's advertising which applicant made of record, registrant's
mark is actually used in the format "SupraMESH," such is irrelevant
and immaterial since, as the Examining Attorney correctly observes,
the "SUPRAMESH" mark which is the subject of the cited registration is
in the format of a typed drawing. In consequence thereof,
registrant's rights in its mark extend to the term itself and not to
the depiction thereof in any special form, such as "SupraMESH." See,
e.g., Phillips Petroleum Co. v. C. J. Webb, Inc. 442 F.2d 1376, 170
USPQ 35, 36 (CCPA 1971).
Ser. No. 75/805,820
12
is likely. .... Accordingly, it is
apparent that these marks are more than
sufficiently similar under Section 2(d) of
the Trademark Act.

We agree with applicant, however, that the assertion
that the respective marks will be pronounced the same "is
specious." While, of course, it is well settled that there is
no correct pronunciation of a mark, see, e.g., Gio. Budon & C.
S.p.A. v. Buitoni Foods Corp., 205 USPQ 477, 482 (TTAB 1979);
Yamaha International Corp. v. Stevenson, 196 USPQ 701, 703 (TTAB
1977); and Sterling Drug Inc. v. Sankyo Co., Ltd., 139 USPQ 395,
396 (TTAB 1963), it is most likely, given the corresponding
connotations (as discussed hereinafter) conveyed by the
respective marks, that registrant's mark would be pronounced
"SOOPRAMESH" or "SUEPRAMESH" while applicant's mark would be
pronounced "SEHPRAMESH." Additionally, as applicant notes in
its reply brief, the Examining Attorney "does not provide a
single example of an English word in which the letter 'u' is
pronounced as a short "e" or in which the letter "e" is
pronounced as 'oo.'" Nonetheless, we find that in view of the
fact that the marks "SUPRAMESH" and "SEPRAMESH" differ only in
the second letter of each mark, such marks are highly similar
overall in sound and appearance.
We further find, however, that such similarity is
outweighed by a factor which the Examining Attorney's brief does
Ser. No. 75/805,820
13
not even discuss, namely, the substantial differences in the
marks at issue in connotation and commercial impression.6 In
view thereof, we concur with applicant that when considered in
their entireties, the marks are distinguishable in commercial
impression, especially when the degree of purchaser care and
sophistication in the selection of the products marketed under
such marks is taken into proper account.
Specifically, citing the definition included below of
"supra-" from an on-line dictionary,7 applicant points out in its
initial brief that:

6 Although applicant also maintains that its "SEPRAMESH" mark is part
of a family of marks for "biosurgery products" which is characterized
by the presence of the common term "SEPRA," the mere fact that
applicant has demonstrated ownership on this record of three such
registrations does not suffice to substantiate its assertion, as set
forth in its initial brief, that its "'SEPRA' biosurgery products are
recognized by medical professionals as originating from the same
source." Aside, however, from the absence of any persuasive evidence
that it has in fact created a family of marks which is recognized by
the relevant purchasing public, see J & J Snack Foods Corp. v.
McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891-92 (Fed. Cir.
1991), the sole issue before us is whether the mark which applicant
seeks to register so resembles registrant's mark that, when used in
connection with the goods at issue, confusion is likely.
Consequently, even if applicant were to demonstrate that it has
established a family of marks characterized by the term "SEPRA," it
would not aid or otherwise entitle applicant to the registration which
it seeks. See, e.g., Hornblower & Weeks Inc. v. Hornblower & Weeks
Inc., 60 USPQ2d 1733, 1737 (TTAB 2001); Baroid Drilling Fluids Inc. v.
Sun Drilling Products, 24 USPQ2d 1048, 1052 (TTAB 1992); and In re Lar
Mor Int'l, Inc., 221 USPQ 180, 183 (TTAB 1983).

7 We judicially notice that, likewise, The American Heritage Dictionary
of the English Language (3rd ed. 1992) at 1805 lists "supra-" as
meaning, in pertinent part, as "pref. 1. Above; over; on top of":
suprarenal." It is settled that the Board may properly take judicial
notice of dictionary definitions. See, e.g., Hancock v. American
Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA
1953); University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Ser. No. 75/805,820
14
[T]he marks convey two different meanings.
The prefix "SUPRA" connotes "above; over; on
top of" (See http://www.dictionary.com/cgi-
bin/dict.pl?term=supra). In contrast,
Applicant adopted the prefix "SEPRA" to
suggest a different meaning, namely "to set
or keep apart, disunite."

....

Further, the common element of the
conflicting marks in this case--"MESH"--is
admittedly descriptive of both ... products,
thus reducing the likelihood of confusion.
.... The inclusion in two marks of such a
descriptive suffix is an insufficient basis
to find likelihood of confusion where the
initial portions of the marks are
sufficiently distinguishable. See
Tektronix, Inc. v. Daktronics, Inc., 187
U.S.P.Q. 588 (TTAB 1975), aff'd, 534 F.2d
915, 189 U.S.P.Q. 693 (CCPA 1976) (TEKTRONIX
for electronic measuring apparatus not
likely to be confused with DAKTRONICS and
design for electronic voting systems).

As applicant further persuasively notes in its reply brief:
The Examining Attorney fails to address
the fact that to a surgeon, the intended
user of the products at issue, the prefixes
"Sepra" and "Supra" connote vastly different
meanings. .... "Sepra" connotes that the
mesh separates certain abdominal tissues and
prevents bowel tissue adhesion to a
prosthesis. This function is critical to
Applicant's product. "Supra" has no such
connotation and only suggests, in the
relevant market, that the mesh be placed
"over" or "on top of" a specific area.
Furthermore, the Registrant's product is
used to encourage tissue adhesion, the exact
opposite use of Applicant's goods. In this

Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983); and Marcal Paper Mills, Inc. v. American
Can Co., 212 USPQ 852, 860 (TTAB 1981) at n. 7.

Ser. No. 75/805,820
15
case, the differences in ... meaning between
the terms "Supra" and "Sepra" are
significant and lead inescapably to the
conclusion that confusion is unlikely.

Such substantial differences in connotation and in
overall commercial impression are significant in the marketplace
for the goods at issue and are sufficient to distinguish the
marks and preclude a likelihood of confusion. Citing Astra
Pharmaceutical Products, Inc. v. Beckman Instruments, Inc., 718
F.2d 1201, 220 USPQ 786, 791 (1st Cir. 1983), applicant
correctly observes in its initial brief that, for a likelihood
of confusion to exist, "it must be based on confusion of some
relevant person; i.e., a customer or user, and there is always
less likelihood of confusion where goods are expensive and
purchased and used by highly specialized individuals after
careful consideration."
Here, according to applicant, its coated mesh for
surgical procedures including hernia repair "is sold to
physicians by medical sales representatives and [is initially]
purchased only after a significant amount of discussion and
formulary review of the product is conducted." Given the
overlap, in light of the identifications of goods in the
respective application and registration, between applicant's
product and registrant's nylon in mesh form used as an implant
in plastic surgery, it must be assumed that registrant's product
Ser. No. 75/805,820
16
would be sold to plastic surgeons in the same or similar manner
as are applicant's goods. Physicians, a class which includes
surgeons, have been held to constitute "a highly intelligent and
discriminating public." Warner-Hudnut, Inc. v. Wander Co., 280
F.2d 435, 126 USPQ 411, 412 (CCPA 1960). Surgeons, in their
capacity as buyers of applicant's and registrant's goods, are
clearly sophisticated purchasers. As such, their
"sophistication is important and often dispositive because
sophisticated end-users may be expected to exercise greater
care." Electronic Design & Sales Inc. v. Electronic Data
Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1392 (Fed. Cir.
1992). Moreover, even if purchased for surgeons at their
direction by members of a hospital administrative staff, it is
still the case that, as asserted by applicant in its initial
brief, the goods at issue herein "are important patient care-
related products such that purchasers and users are certain to
exercise a high degree of care and consideration in making the
purchasing or use decision" and such decision plainly will not
be made on impulse.
In consequence thereof, we conclude that the
sophisticated purchasers of applicant's and registrant's goods
can be expected to be highly cognizant of the substantial
differences in connotation and overall commercial impression
between applicant's "SEPRAMESH" mark for its coated mesh for
Ser. No. 75/805,820
17
surgical procedures including hernia repair and registrant's
"SUPRAMESH" mark for its nylon in mesh form used as an implant
in plastic surgery. Inasmuch as such careful and discriminating
purchasers will thus readily distinguish the marks, confusion as
to the source or sponsorship of the respective goods is not
likely. See, e.g., In re Digirad Corp., 45 USPQ2d 1841, 1845
(TTAB 1998) [no likelihood of confusion between the mark
"DIGIRAD" for gamma radiation sensors, signal processors and
display apparatus for us in medical isotopic tracing and nuclear
imaging and mark "DIGIRAY" and design for electronic digital x-
ray system comprised of an x-ray scanning beam tube and detector
for medical use because, inter alia, "the knowledgeable
purchasers of the ... goods, who are also likely to be
knowledgeable about the distinctions between the fields of
Radiology and Nuclear Medicine, will be acutely aware of the
differences in connotation between the term RAY and RAD and,
thus, will easily distinguish between the marks DIGIRAY and
DIGIRAD based upon the connotations of RAY and RAD in connection
with the ... respective goods"].
Decision: The refusal under Section 2(d) is reversed.