Itec Manufacturing, Ltd.

Trademark Trial and Appeal Board

Feb 13, 2008

No. 78621722 (T.T.A.B. Feb. 13, 2008)

Mailed: 2/13/08

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Itec Manufacturing, Ltd.
________

Serial No. 78621722
_______

David W. Carstens of Carstens & Cahoon for Itec
Manufacturing, Ltd.

Marcie R. Frum Milone, Trademark Examining Attorney, Law
Office 116 (Michael W. Baird, Managing Attorney).
_______

Before Quinn, Kuhlke and Wellington, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Itec Manufacturing, Ltd. filed an application to
register the mark PAL for “medical device, namely a patient
lifting apparatus.”1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when applied
to applicant’s goods, so resembles the previously

1 Application Serial No. 78621722, filed May 3, 2005, alleging
first use anywhere and first use in commerce on May 1, 2005.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 78621722
2
registered marks PAL for “pumps for inflating patient
support mattresses”2; PAL for “surgical and medical patient
support devices for use in lithotomy procedures”3; and

for “medical devices, namely, inflatable patient transfer
and therapy pads”4 as to be likely to cause confusion. The
registrations are owned by three different entities.
When the refusals were made final, applicant appealed.5
Applicant and the examining attorney filed briefs.
Applicant argues that there are differences between
its mark and each of the cited marks, namely that the
acronyms comprising the marks, or included as a feature of
the cited mark in special form, have different meanings.
Applicant further contends that its goods are different
from the goods of each registrant. In urging that the

2 Registration No. 2046338, issued March 18, 1997; renewed.
3 Registration No. 2213410, issued December 22, 1998; Section 8
affidavit accepted, Section 15 affidavit acknowledged.
4 Registration No. 2369632, issued July 25, 2000; Section 8
affidavit accepted, Section 15 affidavit acknowledged.
5 The examining attorney also issued a final refusal on the basis
that as shown on the specimens the applied-for mark fails to
function as a trademark. The examining attorney subsequently
withdrew that refusal.
Ser No. 78621722
3
refusals be reversed, applicant submitted product
information about its goods; excerpts from each of the
registrants’ websites relating to their respective
products; and copies of third-party registrations of marks
comprising, in whole or, in most instances, in part, the
term PAL for goods in the medical field.6
The examining attorney maintains that in two
instances, applicant’s mark is identical to the cited
marks, and in the other refusal, the marks are
substantially similar. As to the goods, the examining
attorney contends that they are closely related, perform
related functions and are likely to travel in the same
trade channels to the same classes of purchasers. More
specifically, the examining attorney contends that
applicant’s identification of goods is broadly worded and,

6 Applicant originally only listed the third-party registrations
in a response. In the Office action immediately thereafter, the
examining attorney made no objection thereto. When applicant
repeated the listing in its request for reconsideration, the
examining attorney, in response, objected to the listing,
indicating that the registrations were not properly made of
record. See In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n.2
(TTAB 1998); and TBMP §1208.02 (2d ed. rev. 2004). Applicant, in
its brief, argued that the examining attorney had waived her
right to object when she failed to object to the initial list.
Further, applicant attached copies of the listed third-party
registrations to its brief. The examining attorney, in her
brief, did not object to this evidence, but rather considered the
third-party registrations as if properly made of record. In view
thereof, the examining attorney is deemed to have stipulated the
registrations into the record. We likewise have considered this
evidence in reaching our decision on the merits.
Ser No. 78621722
4
as such, “it is presumed that the application encompasses
all patient lifting apparatuses, including those identified
by the registrants.” According to the examining attorney,
the goods are related to the extent that they are used to
lift patients. The examining attorney introduced excerpts
of websites in support of her contention that the goods are
related. Also made of record are copies of third-party
registrations that purportedly show that the same entity
has adopted the same mark for the types of goods involved
in this appeal.
Before turning to the individual refusals, the Board
wishes to set forth some general guidelines that govern the
analysis of the issue of likelihood of confusion in each
instance.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (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,
however, two key considerations are the similarities
between the marks and the similarities between the goods.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
Ser No. 78621722
5
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997). One of the other key factors in this appeal
concerns the conditions under which and buyers to whom
sales of the goods at issue are made.
As to the marks, we examine the similarities and
dissimilarities of the marks in their appearance, sound,
meaning, and commercial impression. Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). The test is
not whether the marks can be distinguished when subjected
to a side-by-side comparison, but rather whether the marks
are sufficiently similar in their entireties that confusion
as to the source of the goods offered under the respective
marks is likely to result.
With respect to the goods, it is not necessary that
the respective goods be competitive, or even that they move
in the same channels of trade to support a holding of
likelihood of confusion. It is sufficient that the
respective goods are related in some manner, and/or that
the conditions and activities surrounding the marketing of
the goods are such that they would or could be encountered
by the same persons under circumstances that could, because
of the similarity of the marks, give rise to the mistaken
Ser No. 78621722
6
belief that they originated from the same producer. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
It is well settled that the question of likelihood of
confusion must be determined based on an analysis of the
goods recited in applicant’s application vis-à-vis the
goods identified in the cited registration. In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir.
1993); and Canadian Imperial Bank v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992). Where the goods
in the application at issue and/or in the cited
registration are broadly identified as to their nature and
type, such that there is an absence of any restrictions as
to the channels of trade and no limitation as to the
classes of purchasers, it is presumed that in scope the
identification of goods encompasses not only all the goods
of the nature and type described therein, but that the
identified goods are offered in all channels of trade which
would be normal therefore, and that they would be purchased
by all potential buyers thereof. In re Elbaum, 211 USPQ
639, 640 (TTAB 1981).
We hasten to add, however, that a comparison of the
goods in this appeal is complicated by what we view as the
overly broad and somewhat ambiguous terms “device(s)”
and/or “apparatus” in all but one of the involved
Ser No. 78621722
7
identifications of goods. Nevertheless, as indicated
above, we must compare applicant’s goods as set forth in
the application with the goods as set forth in the cited
registrations. However, given the somewhat vague nature of
the term “device(s)” and/or “apparatus” in the
identifications of goods, we are uncertain as to what the
goods identified in the application and cited registrations
are. Accordingly, we believe, in this particular
situation, it is not improper to consider the extrinsic
evidence showing what these “patient lifting apparatuses”
(as characterized by the examining attorney) actually are.
See In re Trackmobile Inc., 15 USPQ2d 1152 (TTAB 1990).
The Board’s language is instructive in this case:
[W]hen the description of goods for a
cited registration is somewhat unclear,
as is the case herein, it is improper
to simply consider that description in
a vacuum and attach all possible
interpretations to it when the
applicant has presented extrinsic
evidence showing that the description
of goods has a specific meaning to
members of the trade. Cf. In re
Protective Controls, Inc., 185 USPQ
692, 694 (TTAB 1975)(“...[T]he
identification of goods in the [cited]
registration as ‘monitoring
instrument,’ per se, is so indefinite
and so all inclusive as to be
meaningless in attempting to ascertain
whether the respective monitoring
apparatus [of applicant and registrant]
relate to the same or disparate
fields...[T]he better approach in this
Ser No. 78621722
8
particular situation...is to authorize
publication of the mark for
opposition.”); Acomb v. Polywood
Plastics Corp., 187 USPQ 188, 190 (TTAB
1975)(“Judicial interpretation, as
reflected by the decisions of this and
other tribunals, has accorded a
registration in which the goods are
recited in a general rather than a
specific nature a broad scope of
protection sufficient to cover all
types of the particular product or
products enumerated therein.
However,...in the instant case, ‘molded
wood products consisting of particulate
wood and resin’ [the description of
goods in the registration] is so broad
and comprehensive as to be devoid of
any information as to just what molded
wood products are marketed by
opposer.”).

Id. at 1154.
When it comes to terms such as medical “device(s)” or
“apparatus,” we find “it is not proper to rely simply upon
abstract reasoning to give this somewhat vague term a broad
meaning absent countervailing extrinsic evidence showing
that it is entitled to such a broad meaning.” Id. In
point of fact, all of the evidence of record herein
indicates that the involved goods are very specific in
nature as is often the case in the medical field. Given
the ambiguous terms under consideration, we have reviewed
the product information relating to applicant’s goods and
each of the registrant’s goods. This exercise, we believe,
has resulted in a much more informed decision on the du
Ser No. 78621722
9
Pont factor involving the similarity between the goods.
Moreover, the extrinsic evidence bearing on the specific
nature of registrants’ goods helps to explain the
coexistence on the register of the three cited marks
covering goods that, according to the examining attorney,
are all “patient lifting apparatuses.”

Registration No. 2046338
Applicant’s mark PAL is identical to registrant’s mark
PAL. In an attempt to distinguish the marks, applicant
states that its mark is an acronym for “Patient Assist
Lift” whereas registrant’s mark is an acronym for “Powered
Air Loss.” There is no evidence in the record regarding
how relevant purchasers would perceive PAL; further, we
must assume that purchasers will encounter the marks per
se, without any explanation regarding the acronym’s
meaning. Thus, it is only speculation that purchasers
would even know the meanings of the acronyms and,
therefore, perceive any difference between the marks based
on the purported different meanings.
The identity between the marks is a factor that weighs
in favor of finding a likelihood of confusion.
With respect to the goods, we must compare applicant’s
“medical device, namely a patient lifting apparatus” to
Ser No. 78621722
10
registrant’s “pumps for inflating patient support
mattresses.” We note, at the outset of considering this du
Pont factor, that the greater the degree of similarity
between applicant’s mark and the cited registered mark, the
lesser the degree of similarity between applicant’s goods
and registrant’s goods that is required to support a
finding of likelihood of confusion. In re Opus One Inc.,
60 USPQ2d 1812, 1815 (TTAB 2001). If the marks are the
same, as in this case, it is only necessary that there be a
viable relationship between the goods in order to support a
finding of likelihood of confusion. In re Concordia
International Forwarding Corp., 222 USPQ 355, 356 (TTAB
1983).
The record includes product information about
applicant’s goods described as “products designed by
rescuers for rescuers.” According to the literature,
applicant’s product “acts like a body splint.” Further,
the literature indicates the following about the product:
It was designed by rescuers to reduce
physical strain of workers and protect
patients being lifted from any
position. The PAL allows EMS personnel
and healthcare workers to lift and
transport patients while utilizing
proper body mechanics, thereby reducing
muscle strain and back injury.

Ser No. 78621722
11
The product may be used “in evacuating a patient from a
variety of conditions” and “can also be used to aid in
lifting a patient from any position--floor, car, recliner,
bathtub, airplane, etc.” Applicant specifically mentions
that the product “is used to transfer patients to and from
beds, wheelchairs and chairs.”
Registrant’s goods are explained in registrant’s
product literature submitted by applicant. Registrant’s
electrical pump is used in connection with an air mattress
overlay to provide pressure relief to long-term patients.
The goods are distinctly different and are used for
specifically different purposes. Registrant’s goods are
pumps used in connection with air mattresses, whereas
applicant’s goods are in the nature of a body splint.
Registrant’s product is used to relieve pressure on a
patient’s body when resting on an air mattress, while
applicant’s goods are used to transport patients.
Further, the involved goods would be purchased by
medical entities (such as hospitals and rescue squads and
nursing homes) that are sophisticated in the medical
equipment field. Physicians buying such equipment also
would be sophisticated in their purchasing decisions. The
involved goods are unlikely to be bought on impulse, given
that each product addresses very specific (and varied)
Ser No. 78621722
12
medical needs, unlike certain other types of medical
supplies (e.g., disposable exam gowns). See Guardian
Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB
1978).
The specific differences between the goods and the
sophistication of the relevant purchasers are factors that
outweigh the identity between the marks.
This refusal to register is reversed.

Registration No. 2213410
Applicant’s mark PAL is identical to registrant’s mark
PAL. Applicant again attempts, however, to point out the
differences between the marks. Applicant states that its
mark is an acronym for “Patient Assist Lift” while
registrant’s mark is an acronym for “Power Assisted
Lithotomy.” Again, there is no evidence of record that
relevant purchasers would even know the different meanings
of the acronyms, and thereby draw distinctions between the
marks based on meaning.
The identity between the marks is a factor that weighs
in favor of finding a likelihood of confusion.
With respect to the goods, we must compare applicant’s
“medical device, namely a patient lifting apparatus” to
registrant’s “surgical and medical patient support devices
Ser No. 78621722
13
for use in lithotomy procedures.” We again note that the
greater the degree of similarity between applicant’s mark
and the cited registered mark, the lesser the degree of
similarity between applicant’s goods and registrant’s goods
that is required to support a finding of likelihood of
confusion. In re Opus One Inc., 60 USPQ2d at 1815. If the
marks are the same, as in this case, it is only necessary
that there be a viable relationship between the goods in
order to support a finding of likelihood of confusion. In
re Concordia International Forwarding Corp., 222 USPQ at
356.
We take judicial notice of the dictionary definition
of the term “lithotomy”: “surgical removal of a stone or
stones from the urinary tract.” The American Heritage
Dictionary of the English Language (4th ed. 2000).
Applicant submitted information about registrant’s
product. This information, which includes a photograph of
the goods, shows that registrant’s product is mounted on an
operating room table for use during a surgical procedure.
Applicant’s “support devices” essentially are adjustable
leg-positioning stirrups that permit “moving the patient’s
legs through the lithotomy safety zone.”
Based on the present record, applicant and
registrant’s goods are only minimally related in that they
Ser No. 78621722
14
are both used to “support” patients (but only in the
broadest meaning of “support”). However, when we consider
the meaning of “lithotomy” coupled with the specific nature
of registrant’s “support devices,” it is apparent that
there is a significant difference between applicant’s
“medical device, namely a patient lifting apparatus” and
registrant’s “surgical and medical patient support devices
for use in lithotomy procedures.” Further, the goods would
be sold to medical professionals and healthcare entities
such as hospitals and surgical facilities, and not to
ordinary consumers.
This refusal to register is reversed.

Registration No. 2369632
As reproduced earlier in this opinion, registrant’s
mark is AIRPAL in special form. The term AIR in
registrant’s mark is merely descriptive or highly
suggestive, given that registrant’s goods are inflatable.
Thus, we find that the dominant portion of registrant’s
mark is PAL; this is identical to the entirety of
applicant’s mark. It is well settled that one feature of a
mark may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
Ser No. 78621722
15
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985) [“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 consideration of the marks in
their entireties. Indeed, this type of analysis appears to
be unavoidable.”]. In sum, we find that the marks are
similar in sound and appearance. As to meaning, the term
“air,” as indicated above, gives the mark a connotation
that air is involved, resulting in a somewhat different
meaning than applicant’s mark. Likewise, the commercial
impressions of the marks are somewhat different.
Nevertheless, given the commonality of the term PAL, we
find that the similarities between the marks in terms of
sound and appearance outweigh the difference in meaning.
With respect to the goods, we must compare applicant’s
“medical device, namely a patient lifting apparatus” to
registrant’s “medical devices, namely, inflatable patient
transfer and therapy pads.”
Applicant submitted product literature about
registrant’s goods. The information indicates that the
goods “may be used wherever a lateral transfer [of a
patient] is necessary throughout the hospital.”
Registrant’s product was “designed specifically to reduce
Ser No. 78621722
16
the risks associated with patient handling.” Registrant’s
pad is inflated with an electrical pump, thereby lifting
the patient, and the patient “is literally transferred on a
cushioned film of air.”
Although applicant’s goods and registrant’s goods are
both used to transfer patients, the task is accomplished in
very different manners. Registrant’s goods are inflated to
accomplish the transfer. Contrary to the examining
attorney’s contention, we do not believe that the vague
terminology “devices” in either identification of goods
should be read so broadly as to encompass the other. As
shown by applicant’s product literature, its goods are in
the nature of a rigid body splint whereas registrant’s
goods are inflatable pads.
Once again, sophisticated purchasers such as hospitals
would buy the goods.
The refusal to register is reversed.

General Comments
In comparing the goods involved in each of the
refusals we have considered the evidence introduced by the
examining attorney in an attempt to show that the goods are
related. The examining attorney submitted excerpts
retrieved from www.zapconnect.com, and an excerpt of the
Ser No. 78621722
17
U.S. Food and Drug Administration (“FDA”) website showing
that applicant’s goods, as well as the goods of each of the
registrants, are classified in the FDA Medical Specialty
Category named “General Hospital and Personal Use.”
Applicant has criticized this evidence, pointing out the
shortcomings of its probative value in comparing the goods.
The fact that applicant and each of the registrants may be
competitors in the medical device industry is not
sufficient to establish that the goods are related; to hold
otherwise would mean that all goods sold by competitors in
the vast and highly specialized medical field would be
related for purposes of a likelihood of confusion analysis.
We agree with the assessment offered by applicant: “While
the ZapConnect website and the FDA classification of
medical device types may show that there is some
relationship between the goods...the mere fact that both
the Applicant’s Mark and the marks of the Cited
Registrations cover medical products, does not establish
that the specific goods covered by Applicant’s Mark and the
Cited Registrations are so closely related that consumers
would expect the sources of the goods to be associated or
related.”
The third-party registrations introduced by the
examining attorney also do not persuade us that the goods
Ser No. 78621722
18
are sufficiently related so as to find a likelihood of
confusion. We readily acknowledge that third-party
registrations that individually cover different items and
that are based on use in commerce serve to suggest that the
listed goods and/or services are of a type that may emanate
from a single source. See In re Albert Trostel & Sons Co.,
29 USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard
Co. Inc., 6 USPQ2d 1467 (TTAB 1988). In her brief, the
examining attorney highlights five of these registrations
in an attempt to show that the goods are related. The
examining attorney asserts that the registrations show
the nature and variety of goods that
makers of ‘patient transfer’ devices
also make: from ‘air pressure pads and
pumps’ (see Reg. 3003759) to ‘hospital
beds’ (see Reg. 3166029) to ‘walkers’
and ‘wheelchairs’ (see Reg. 3166029) to
‘mattress pads and mattress protectors’
(see Reg. 2817300 to ‘postural devices
in the nature of self-inflating pads or
cushions’ (see Reg. 2611959). It is
clear that consumers in the field of
medical devices are accustomed to the
same trademarks being used on a variety
of related goods.

We find this evidence to be particularly unpersuasive
in this case. None of the third-party registrations lists
both specific types of goods covered by the application and
any of the cited registrations. The registrations
highlighted by the examining attorney show simply that one
Ser No. 78621722
19
entity may sell a wide variety of medical products under a
single mark. We find that this fact diminishes the
probative value of these registrations in determining the
relatedness of the specific products at issue.
As briefly indicated earlier, the sophistication of
purchasers of medical equipment plays an important role in
our analysis of likelihood of confusion in this appeal.
Against the backdrop of the relatively minimal
evidence bearing on the relatedness of the specific goods
is the fact that, even assuming that applicant’s and
registrant’s goods would be purchased by the same doctors,
hospitals, out-patient surgical centers and other medical
facilities, it is readily apparent that the purchasing
decisions for such goods would be made by highly
sophisticated and knowledgeable buyers under conditions of
sale which would further minimize any likelihood of
confusion as to source or affiliation. As Astra
Pharmaceutical Products, Inc. v. Beckman Instruments, Inc.,
718 F.2d 1201, 220 USPQ 786, 791 (1st Cir. 1983) makes
clear, 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
Ser No. 78621722
20
consideration.” It has long been recognized that
purchasers of medical equipment, whether hospital personnel
or physicians, are highly sophisticated and, as such, are
more likely to distinguish between marks and goods than is
the general consuming public. In re N.A.D., 754 F.2d 996,
224 USPQ 969, 971 (Fed. Cir. 1985); and Pfizer Inc. v.
Astra Pharmaceutical Products Inc., 858 F.Supp. 1305, 33
USPQ2d 1545, 1562 (S.D.N.Y. 1994) [“[t]he consumers here
are doctors, as sophisticated a group as one could
imagine”].
The involved goods would be purchased and used by a
variety of medical professionals. See, e.g., Warner-
Hudnut, Inc. v. Wander Co., 280 F.2d 435, 126 USPQ 411, 412
(CCPA 1960) [physicians constitute “a highly intelligent
and discriminating public”]. Because the products at issue
are all used for patient care (and, in the case of
applicant’s product and two of the registrants’ products,
also contribute to the well-being of medical care
personnel), we can safely assume that the doctors and
hospital personnel responsible for the selection and
purchase of those products will exercise a high degree of
care in purchasing decisions to ensure that the products
come from a reputable source, thereby further minimizing a
likelihood of confusion. Their “sophistication is
Ser No. 78621722
21
important and often dispositive because ‘[s]ophisticated
consumers 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),
quoting from Pignons S.A. de Mecanique de Precision v.
Polaroid Corp., 657 F.2d 482, 212 USPQ 246, 252 (1st Cir.
1981). While, in this case, it is possible for the same
medical professional or medical facility to purchase both
applicant’s and each registrant’s goods, the Federal
Circuit has cautioned that it is error to deny registration
simply because an applicant markets and sells its goods in
the same general field as those promoted and sold by the
registrant (e.g., the medical field). See Electronic
Design & Sales, 21 USPQ2d at 1391.
When consumers exercise heightened care in evaluating
products before making purchasing decisions, there is not a
strong likelihood of confusion. Electronic Design & Sales
Inc., 21 USPQ2d at 1392 [“there is always less likelihood
of confusion where goods are...purchased after careful
consideration.”]. As Professor McCarthy notes, “[w]here
the relevant buyer class is composed solely of
professional, or commercial purchasers, it is reasonable to
set a higher standard of care than exists for consumers.”
Ser No. 78621722
22
3 McCarthy on Trademarks and Unfair Competition, § 23:101
(4th ed. 1998).
In sum, the types of products involved in this appeal
would be bought by highly knowledgeable, discriminating and
sophisticated purchasers after thorough deliberation.
Further, the goods are distinctly different. Given the
knowledge, care and deliberation required of doctors,
hospitals and other medical facilities in making the
purchasing decisions with respect to applicant’s and
registrants’ goods, it is unlikely that they would be
confused.
In reaching our decision with respect to each of the
refusals, we have taken into account the third-party
registrations of PAL marks in the medical equipment field.
The eighteen registered marks comprise PAL, either in whole
or in part, each covering medical products in International
Class 10. Some of the registrations show that the term was
adopted to suggest a friend or “pal” to the patient (see,
e.g., PATIENT PAL and WHEELCHAIR PAL). This same
suggestiveness equally applies to each of the marks
involved herein. More significant to us, however, is the
coexistence on the register of the three cited marks, each
owned by a different entity. Although undoubtedly
considered by the examining attorney, this fact apparently
Ser No. 78621722
23
was outweighed by the other factors at issue. In any
event, we note the following language in TMEP
§1207.01(d)(x) (5th ed. 2007): “If the examining attorney
finds registrations that appear to be owned by more than
one registrant, he or she should consider the extent to
which dilution may indicate that there is no likelihood of
confusion.” In the present case, we find that the
coexistence of the three prior registrations is probative
in showing that confusion is unlikely to occur among the
relevant medical professionals and other medical entities
purchasing the involved goods.
In short, we find that the distinct differences
between the specific goods at issue, coupled with the fact
that the goods are sold to medical professionals and
entities with a high level of knowledge about the medical
equipment field, outweigh the identity or similarity
between applicant’s mark and each of the cited marks.
Confusion among purchasers, while possible, is not likely.
The Trademark Act does not prevent registration of a mark
on the mere possibility of consumer confusion, but requires
that confusion be likely. See Bongrain International
(American) Corporation v. Delice de France Inc., 811 F.2d
1479, 1 USPQ2d 1775, 1779; and In re The Ridge Tahoe, 221
USPQ 839, 840 (TTAB 1983). See also Electronic Design &
Ser No. 78621722
24
Sales Inc., 21 USPQ2d at 1391, citing Witco Chemical Co. v.
Whitfield Chemical Co., Inc., 418 F.2d 1403, 1405, 164 USPQ
43, 44-45 (CCPA 1969), aff'g 153 USPQ 412 (TTAB 1967) [“We
are not concerned with mere theoretical possibilities of
confusion, deception, or mistake or with de minimis
situations but with the practicalities of the commercial
world, with which the trademark laws deal.”].
Decision: The refusal to register is reversed in each
instance.