Innovative Healthcare Corporation

Trademark Trial and Appeal Board

Jun 2, 2015

No. 85940426 (T.T.A.B. Jun. 2, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: June 2, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Innovative Healthcare Corporation
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Serial No. 85940426
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Frank J. Catalano, Chad M. Hinrichs, Paul E. Rossler and Alicia J. Edwards, of
GableGotwals, for Innovative Healthcare Corporation

Jordan A. Baker, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
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Before Kuczma, Adlin and Masiello,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Innovative Healthcare Corporation (“Applicant”) seeks registration on the
Principal Register of the mark PRODERM (in standard characters) for:
Gloves for medical and dental use in International Class
10.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), citing Registration

1 Application Serial No. 85940426 filed on May 23, 2013, based upon Applicant’s claim of
first use of the mark anywhere and in commerce since at least as early as January 17, 2003.
Serial No. 85940426
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No. 4383983 for the mark PRODERMA (standard characters) for the following
relevant goods:
Medical disposable products, namely latex exam gloves,
vinyl gloves, nitrile gloves . . . in International Class 10,
as a bar to registration.2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. Applicant and the Examining Attorney filed briefs and
Applicant filed a reply brief. We have considered the evidence and arguments and
affirm the refusal to register.
I. Likelihood of Confusion
Our determination of likelihood of confusion under § 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to the factors bearing on
the likelihood of confusion. 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., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
The Examining Attorney refused registration of Applicant’s mark based on the
similarity of the marks, goods and trade channels. In response, Applicant contends
that the following evidence makes a mistaken belief that the goods originate from
the same source unlikely: “(1) more than eleven years of contemporaneous use, (2)
approximately 423,203,296 PRODERM gloves having been sold, (3) the lack of any
occurrences of actual confusion in the knowledge of Applicant despite the term of
contemporaneous use and sales volume, (4) the sophistication of the purchasers in

2 Registration No. 4383983 issued August 13, 2013.
Serial No. 85940426
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the relevant market, and (5) the presence of a distinguishable difference between
the marks.”3 We now turn to a consideration of this evidence and the overall merits
of this appeal.
A. The similarity or dissimilarity and nature of the goods, channels of trade and
classes of consumers
We first consider the du Pont factor involving the similarity or dissimilarity of
Applicant’s goods (gloves for medical and dental use), in relation to the goods in the
cited registration (medical disposable products, namely latex exam gloves, vinyl
gloves, nitrile gloves). It is well-settled that the issue of likelihood of confusion
between applied-for and registered marks must be determined on the basis of the
goods as they are identified in the involved application and registration. Paula
Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77
(CCPA 1973).
Both Applicant and Registrant produce gloves for a variety of medical uses.
Applicant’s “gloves for medical and dental use” are identified broadly enough to
encompass the more specific latex exam gloves, vinyl gloves and nitrile gloves
identified in the cited registration. Thus, Applicant’s goods and the goods in the
cited registration are legally identical.
Neither Applicant’s nor Registrant’s goods are restricted to any particular trade
channel. Where, as here, the goods in an application are broadly described and
there are no limitations in the identification of goods as to their nature, type,

3 App. Appeal Brf. 4 TTABVUE 6-7; Reiber Affidavit, ¶¶ 2, 9-11; March 10, 2014 Response
to Office Action, pp. 13, 15.
Serial No. 85940426
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channels of trade or classes of purchasers, it is presumed that the scope of the
application encompasses all goods of the nature and type described, that Applicant’s
goods move in all channels of trade that would be normal for such goods, and that
Applicant’s goods would be purchased by all potential customers. In re La Peregrina
Ltd., 86 USPQ2d 1645, 1646 (TTAB 2008). Moreover, because the goods are legally
identical, they must be presumed to travel in the same channels of trade, and to be
sold to the same class of purchasers. In re Smith and Mehaffey, 31 USPQ2d 1531,
1532 (TTAB 1994); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing The
Kalart Co., Inc. v. The Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA
1958); see also, In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (absent restrictions in the application and registration, goods are presumed to
travel in the same channels of trade to the same class of purchasers; the Board was
entitled to rely on this legal presumption in determining likelihood of confusion).
Relying on the Affidavit of its President, Applicant argues that its goods are sold
predominantly in large volumes to “sophisticated distributors” and to “sophisticated
purchasing agents or end users all serving, or practicing directly, in the health care
industry.”4 While buyers of Applicant’s products are in the healthcare industry,
Applicant did not submit any evidence that relevant purchasers are knowledgeable
and discriminating in making purchasing decisions about medical gloves such as
those sold under the involved marks. Cf. Edwards Lifesciences Corp. v. VigiLanz
Corp., 94 USPQ2d 1399, 1413 (TTAB 2010). Other than the foregoing statement in

4 Reiber Affidavit, ¶ 5; March 10, 2014 Response to Office Action, p. 14.
Serial No. 85940426
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Applicant’s President’s Affidavit, there is no evidence of any special degree of
sophistication among purchasers of Applicant’s and Registrant’s goods. Accordingly,
the sophistication and care of purchasers under the fourth du Pont factor is not
controlling in this case, and it does not render these purchasers immune to source
confusion arising from use of these highly similar marks on the virtually identical
goods. The Court’s analysis of this issue in In re Research and Trading Corp., 793
F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) is applicable here:
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.” Carlisle Chemical Works, Inc. v. Hardman & Holden
Ltd., 434 F.2d 1403, 1406, 168 USPQ 110, 112 (CCPA 1970).
Sophistication of buyers and purchaser care are relevant
considerations, but are not controlling on this factual record.

Thus, even if the purchasers are sophisticated or knowledgeable in the field, that
does not necessarily mean they are immune to source confusion. See In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993) (indicating that “even
sophisticated purchasers can be confused by very similar marks”); In re Total
Quality Group, Inc., 51 USPQ2d 1474, 1477 (TTAB 1999); In re Decombe, 9 USPQ2d
1812, 1814-15 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB
1983); cf. Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1163 (Fed. Cir. 2014) (affirming that TTAB properly considered all
potential investors for recited services, which included sophisticated investors, but
that precedent requires TTAB decision to be based “on the least sophisticated
potential purchasers.”).
Serial No. 85940426
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Based on the foregoing, the du Pont factors of the similarity of the goods, trade
channels and customers favor a finding of likelihood of confusion. Additionally,
Applicant’s evidence of the conditions under which sales are made does not
persuade us that a significantly heightened degree of care is exercised by
purchasers of the goods, or that all purchasers are necessarily sophisticated.
B. The similarity or dissimilarity of the marks as to appearance/sound/meaning
and commercial impression
We now turn to the du Pont factor focusing on the similarity or dissimilarity of
the marks in their entireties as to appearance, sound, meaning and commercial
impression. du Pont, 177 USPQ at 567. Where the goods of the applicant and cited
registrant are identical, as they are in this case, the degree of similarity between
the marks required to support a finding of likelihood of confusion is not as great as
would be required with diverse goods. In re Mighty Leaf Tea, 601 F.3d 1342, 94
USPQ2d 1257, 1260 (Fed. Cir. 2010) citing Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); In re J.M.
Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987).
The marks in this case, PRODERM and PRODERMA, share the same first 7
letters (of the eight in Registrant’s mark) in the same order, rendering them similar
in appearance, sound and meaning. Indeed, the marks differ by only a single letter
at the end of Registrant’s mark. Applicant argues that the omission of the letter “A”
at the end of its mark distinguishes its mark from the cited mark. However, the
terms “derm” and “derma” located at the end of the marks both suggest a
Serial No. 85940426
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relationship to the skin5 and, therefore, the lack of the additional letter “A” in
Applicant’s PRODERM mark does not significantly alter its meaning or overall
commercial impression. Moreover, the omission of one letter is often insufficient to
distinguish two otherwise similar marks. See Apple Computer v. TVnet.net Inc., 90
USPQ2d 1393,1396 (TTAB 2007) (letter “v” is insufficient to distinguish the
dominant portions of the parties’ ITUNES and VTUNES marks); Interlego AG v.
Abrams/Gentile Entertainment Inc., 63 USPQ2d 1862, 1863 (TTAB 2002) (many
adults would not notice the very minor difference between LEGO and MEGO);
Humble Oil, 165 USPQ at 604 ( S-LON and ESLON differ essentially by one letter
and a hyphen and would be recognized as the same mark); M&T Chemicals Inc. v.
Stepan Chemical Co., 150 USPQ 570, 571 (TTAB 1966) (BIO-DENT similar to
BIOMET in sound and appearance).
Applicant also argues that the lack of the letter “A” in its mark is significant
because consumers are familiar with Applicant’s similar gloves sold under its
registered NITRIDERM mark. Applicant contends that its purchasers are
sophisticated and familiar with the “DERM” element of its NITRIDERM mark and
would import that into consideration of its PRODERM mark.6 Inasmuch as our
focus in this case is on the PRODERM mark that Applicant seeks to register rather
than other marks Applicant has registered, Applicant’s ownership of other marks

5 See Wiktionary evidence, http://en.wiktionary.org/wiki/derma; http://en.wiktionary.
org/wiki/derm, attached to September 9, 2013 Office Action which includes entries for
“derm” and “derma” from Webster’s Dictionary, noting that both definitions define the
wording as being related to skin.
6 Appl. Appeal Brf. 4 TTABVUE 5-6.
Serial No. 85940426
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has little relevance. In an ex parte appeal, the focus of the likelihood-of-confusion
analysis must be the mark Applicant seeks to register, not other marks Applicant
may have used or registered. Thus, a family-of-marks argument which includes
PRODERM is of no particular significance where PRODERM is confusingly similar
to the cited registered mark PRODERMA. In re Cynosure Inc., 90 USPQ2d 1644,
1645-46 (TTAB 2009); In re Ald, Inc., 148 USPQ 520, 521 (TTAB 1965). See also In
re U.S. Plywood-Champion Papers, Inc., 175 USPQ 445, 446 (TTAB 1972)
(“Applicant’s ownership and registration of marks other than the mark sought to be
registered herein is immaterial and irrelevant to the specific issue before us, and
cannot justify the registration of what could be a confusingly similar mark.”
(Citations omitted)). The question here is whether consumers familiar with
Registrant’s mark would assume that Applicant’s goods come from the same source,
and there is no evidence that consumers familiar with Registrant’s mark are also
familiar with Applicant’s uninvolved NITRIDERM mark.
Applicant also argues that its mark is different from Registrant’s mark because
along with its PRODERM mark it always includes its full business name or
acronym on its goods.7 A determination of likelihood of confusion is based on the
mark in the application’s drawing for which registration is sought and the
application’s identification of goods, including any limitations or restrictions that
may be set forth therein. The drawing does not display Applicant’s mark with
Applicant’s name or any acronym. Nor is there any limitation set forth in the

7 Reiber Affidavit, ¶ 6; March 10, 2014 Response to Office Action, p. 14. Appl. Appeal Brf. 4
TTABVUE 7.
Serial No. 85940426
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identification of goods indicating that the goods would be sold in such a way as to
closely associate the goods with Applicant’s business name. Therefore, any
additional matter on Applicant’s packaging, such as its business name, is not
relevant.
In view of the foregoing, we find that the similarities in the parties’ marks in
appearance, sound, meaning and commercial impression outweigh any
dissimilarity.
C. Lack of evidence of actual confusion
Based on more than 11 years of contemporaneous use of Applicant’s and
Registrant’s marks, and sales of approximately 423,203,296 gloves under
Applicant’s mark, with no actual confusion known to Applicant, Applicant argues
that these marks have been sufficiently distinguished in the marketplace such that
confusion is unlikely.8
The Affidavit of Applicant’s President stating that Applicant is unaware of any
actual confusion occurring as a result of the contemporaneous use of Applicant’s and
Registrant’s marks is of little probative value in this ex parte proceeding where we
have no evidence pertaining to the nature and extent of Registrant’s use (and thus
cannot ascertain whether there has been ample opportunity for confusion to arise, if
it were going to); moreover, Registrant has not had any opportunity to provide its
own evidence. In re Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001); In re
Fischer Tool Co., 224 USPQ 796, 798 (TTAB 1984); In re Barbizon International,

8 Reiber Affidavit, ¶¶ 2, 9-11; March 10, 2014 Response to Office Action, p. 13, 15; Appl.
Appeal Brf. 4 TTABVUE 14-15.
Serial No. 85940426
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Inc., 217 USPQ 735, 737 (TTAB 1983); In re Sieber & McIntyre, Inc., 192 USPQ 722,
724 (TTAB 1977). As the Federal Circuit noted in In re Majestic Distilling, the lack
of evidence of actual confusion carries little weight, especially in an ex parte context.
See In re Majestic Distilling Co., Inc., 65 USPQ2d at 1205 (“uncorroborated
statements of no known instances of actual confusion are of little evidentiary
value”). Thus, the fact that Applicant is not aware of any actual confusion is not
conclusive that actual confusion does not exist or that there is no likelihood of
confusion. In re Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA
1973). We find the du Pont factor of the length of time during and conditions under
which there has been contemporaneous use without evidence of actual confusion is
neutral.
D. Whether Registrant can exclude Applicant from using Applicant’s mark
Applicant maintains that as the senior user of its mark PRODERM, it has the
right to exclude others from using the mark for gloves for medical and dental use.
Applicant further asserts that since there is no evidence that Registrant marketed
such goods prior to Applicant’s marketing thereof, Registrant’s mark should not
operate to bar registration of Applicant’s mark for its goods.9 Applicant’s argument
misses the point. The Examining Attorney’s refusal under § 2(d) is not based upon
Registrant’s prior use, but on the fact that Registrant’s mark is registered. The
relevant clause of § 2(d) provides that registration may be refused based on “a mark
registered in the Patent and Trademark Office,” 15 U.S.C. § 1052(d). Although prior

9 Appl. Appeal Brf. 4 TTABVUE 15.
Serial No. 85940426
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use can be relevant to whether a court can enjoin another’s use of a mark, this ex
parte proceeding, concerning only registration and in which Registrant is not
represented, is not an appropriate forum in which to challenge Registrant’s rights.
Collateral attacks such as this on cited registrations are not permitted. See, e.g., In
re Dixie Restaurants Inc., 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997) (ex parte
proceeding is not the proper forum for challenge to prima facie presumption of
validity of cited registration); In re Calgon Corp., 168 USPQ 278, 280 (CCPA 1971);
In re Covalinski, 113 USPQ2d 1166, 1167 n. 3 (TTAB 2014).
E. Conclusion
Applicant’s PRODERM mark and the cited PRODERMA mark are both used on
medical gloves. The marks share the same seven letters with the cited mark
containing only an extra letter “A” at the end of the mark. The marks are
sufficiently similar in their entireties that customers are likely to be confused as to
the source of the legally identical medical gloves provided under them. Applicant’s
evidence does not establish that a significantly heightened degree of care is
exercised by purchasers of the goods, or that all purchasers are necessarily
sophisticated. The absence of evidence of actual confusion is neutral. On balance, we
conclude that there is a likelihood of confusion based on the similarity between the
marks and the goods, and the presumed overlap in trade channels and purchasers.
Decision: The refusal to register Applicant’s mark PRODERM under Section
2(d) of the Trademark Act is affirmed.