Johnson & Johnson

Trademark Trial and Appeal Board

Apr 18, 2002

No. 75252479 (T.T.A.B. Apr. 18, 2002)

Mailed: April 18, 2002
Paper No. 13
EWH
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
Trademark Trial and Appeal Board
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In re Johnson & Johnson
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Serial No. 75/252,479
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Norm D. St. Landau of Drinker Biddle & Reath.
Brian B. Brown, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
____________
Before Hanak, Wendel and Drost, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Johnson & Johnson (applicant) seeks to register in
typed drawing form EPIC MICROVISION for “endoscopic fiber
optic viewing system, namely, endoscopes and accessories
therefore.” The intent-to-use application was filed on
March 5, 1997.
The Examining Attorney has refused registration
pursuant to Section 2(d) of the Trademark Act on the basis
that applicant’s mark, as applied to applicant’s goods, is
THIS OPINION IS NOT
CITABLE
AS PRECEDENT OF
THE T.T.A.B.
likely to cause confusion with the mark EPIC, previously
registered in typed drawing form for “digital,
Ser. No. 75/252,479
electrophysiology imaging processing computer and work
station product for use in catheter positioning and
electrophysiology imaging event recording and instruction
manuals provided in connection therewith.” Registration No.
2,057,665 issued April 29, 1997.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request a
hearing.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the marks and the similarities of the goods. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976)(“The 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.”)
Considering first the marks, we note at the outset
that the Examining Attorney has never contended that the
MICROVISION portion of applicant’s mark EPIC MICROVISION is
descriptive of applicant’s goods. At page 4 of his brief,
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the Examining Attorney merely argues that both marks are
similar because they contain the term EPIC. Obviously, the
presence of the term EPIC in both marks does cause them to
be somewhat similar. However, the presence of the much
longer word MICROVISION in applicant’s mark serves to
distinguish the two marks, especially when one considers
that, as will be discussed at greater length later, the
purchasers and users of applicant’s goods and registrant’s
goods are very sophisticated professionals.
Turning to a consideration of the goods, applicant’s
goods are endoscopes. An “endoscope” is defined as “an
instrument for examining visually the inside of a hollow
organ, as the rectum.” Webster’s New World Dictionary
(1996). Registrant’s goods are decidedly more complex.
Essentially they are computers and work stations for use in
electrophysiology imaging event recording and catheter
positioning. The term “electrophysiology” is defined as “a
field of study that deals with the relationships of body
functions to electrical phenomenon (e.g., the effects of
electrical stimulation on tissues, the production of
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electric currents by organs and tissues, and the
therapeutic use of electric currents).” Taber’s Cyclopedic
Medical Dictionary (18th ed. 1997).
In a further effort to clarify the nature of
registrant’s EPIC computer and work station product for use
in electrophysiology imaging event recording and catheter
positioning, applicant retained the services of a private
investigator, James Moy. In a declaration dated May 5,
1999, Mr. Moy states that on that day he spoke with Dennis
Clouse, the Original Equipment Manufacturer Manager at
Fisher Imaging Corporation (registrant). Mr. Moy declares
that Mr. Clouse stated to him that registrant’s EPIC
product is essentially a computer system. Mr. Moy also
obtained literature regarding registrant’s EPIC product.
This literature demonstrates that registrant’s computer
systems are designed specifically for electrophysiology and
that they range in price from $350,000 to $1,175,000.
At this juncture, one point merits clarification. In
Board proceedings, the question of likelihood of confusion
is determined based upon a consideration of the goods
described in applicant’s application and the goods
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described in registrant’s registration, and not on what
applicant’s actual goods and registrant’s actual goods may
be. Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1838, 1815 (Fed. Cir. 1987). In most cases,
the descriptions of goods in the application and
registration are clear. Thus, by way of example, if a
prior registration utilizes the unambiguous term
“vegetables” as its description of goods, it would be
improper for the applicant to make of record extrinsic
evidence showing that currently registrant makes use of its
mark only on “peas.” However, when the description of
goods in the cited registration is somewhat unclear, as is
the case here, it is entirely proper for applicant to make
of record extrinsic evidence explaining what the
description of goods in the cited registration means. Such
extrinsic evidence does not limit the description of goods
of the cited registration, but merely explains the
description of goods of the cited registration. In re
Trackmobile Inc., 15 USPQ2d 1152, 1153-54 (TTAB 1990).
Moreover, even without applicant’s extrinsic evidence
explaining the description of goods set forth in the cited
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registration, it is obvious that both endoscopes
(applicant’s goods) and computers and work stations for use
in electrophysiology imaging event recording and catheter
positioning are distinctly different types of medical
devices. The fact situation in this case is very similar
to that in the case of Astra Pharmaceutical Products v.
Beckman Instruments, 718 F.2d 1201, 220 USPQ 786 (1st Cir.
1983) which was cited with approval by our primary
reviewing Court in Electronic Design & Sales v. Electronic
Data Systems, 954 F.2d 713, 21 USPQ2d 1388, 1390 (Fed. Cir.
1992). In Astra Pharmaceutical, the First Circuit found no
likelihood of confusion resulting from the use of the
identical mark ASTRA on different medical products sold to
the very same hospitals. Plaintiff’s ASTRA medical
products included syringes, which like applicant’s
endoscopes, penetrate the body, albeit for different
purposes. On the other hand, the defendant’s medical
devices were analyzers used in hospitals which cost between
$35,000 and $60,000. Compared to the analyzers in the
Astra Pharmaceutical case, registrant’s computers and work
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stations for electrophysiology imaging event recording and
catheter positioning are even more complex and costly
devices.
In similar fashion, our primary reviewing Court in
Electronic Design & Sales found no likelihood of confusion
when virtually identical marks (EDS and E.D.S.) were used
on goods and services marketed not only in the medical
field, but also to the very same companies in the medical
field. Electronic Design & Sales, 21 USPQ2d at 1391.
Finally, if there was any lingering question as to
whether there exists a likelihood of confusion in this
case, said question must be answered in the negative when
one takes into account that both applicant’s goods and
registrant’s goods are sold to and used by only highly
sophisticated individuals, namely, physicians. In this
regard, we note that the predecessor to our primary
reviewing Court has held that physicians are “a highly
intelligent and discriminating public.” Warner Hudnut, Inc.
v. Wander Co., 280 F.2d 435, 126 USPQ 411, 412 (CCPA 1960).
As our primary reviewing Court has made abundantly clear,
purchaser “sophistication is important and often
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dispositive because sophisticated consumers may be expected
to exercise greater care.” Electronic Design & Sales, 21
USPQ2d at 1392. We do not understand the statement at page
6 of the Examining Attorney’s brief that “the applicant’s
and registrant’s identifications of goods are broadly
written so they encompass use by everyday consumers.” Of
course, the Examining Attorney could present no evidence in
support of this untenable position. Everyday consumers do
not use endoscopes, and they certainly do not use computers
and work stations for electrophysiology imaging event
recording and catheter positioning.
In short, because unlike the identical or virtually
identical marks in Astra Pharmaceutical and Electronic
Design & Sales, the marks in question here are not remotely
identical but instead are distinguishable (i.e. EPIC v.
EPIC MICROVISION); the goods of the parties are decidedly
different; registrant’s goods, as described in its
registration, are inherently very expensive; and both
applicant’s goods and registrant’s goods would be purchased
only by sophisticated and discriminating individuals, we
find that there exists no likelihood of confusion.
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Decision: The refusal to register is reversed.
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