Karl Storz GmbH & Co. KG

Trademark Trial and Appeal Board

Mar 25, 2015

No. 85801792 (T.T.A.B. Mar. 25, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 25, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Karl Storz GmbH & Co. KG
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Serial No. 85801792

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Wesley W. Whitmyer, Jr. and Andy Corea of St. Onge Steward Johnston
& Reens LLC, for Karl Storz GmbH & Co. KG

Natalie Polzer, Trademark Examining Attorney, Law Office 108,
Andrew Lawrence, Managing Attorney.
_____

Before Shaw, Adlin and Gorowitz,
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Karl Storz GmbH & Co. KG (“Applicant”) seeks registration on the Principal
Register of the mark KARL STORZ PARACHUTE (in standard characters) for
Surgical instruments and apparatus, namely, suture
anchors for affixing soft tissue in joint surgery, none of
the foregoing directed to goods and services in the
ophthalmic field or for the treatment of congestive heart
failure, in International Class 10; and
Photographs and printed matter, namely brochures,
catalogs, printed information sheets, flyers, printed
teaching and instructional material, excluding apparatus,
all in the field of joint surgery, none of the foregoing
Serial No. 85801792
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directed to goods and services in the ophthalmic field or
for the treatment of congestive heart failure, in
International Class 16.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles the registered mark PARACHUTE in standard
characters for “medical implants composed of artificial materials” in International
Class 102 that as used in connection with Applicant's identified goods, it is likely to
cause confusion or mistake or to deceive.
Applicant appealed the final refusal. We affirm the refusal to register.
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, 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 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).

1 Application Serial No. 85801792 was filed on December 13, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
2 Registration No. 4060369, issued November 22, 2011.
Serial No. 85801792
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A. Similarity or dissimilarity of the goods.
We start our analysis with the second du Pont factor and look at the relationship
between the goods. When determining the relationship between the goods,
[t]he authority is legion that the question of registrability
of an applicant's mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant's goods, the particular
channels of trade or the class of purchasers to which sales
of the goods are directed.
Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Stone Lion Capital Partners, LP v.
Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-1162 (Fed. Cir. 2014).
Applicant’s Class 16 goods consist of photographs and printed material in the
field of “joint surgery.” Applicant’s Class 10 goods consist of a surgical device or
apparatus, specifically suture anchors, used in joint surgery. We will discuss the
Class 10 goods first.
1. Comparison of Applicant’s Class 10 goods with the goods in the
cited registration.
While noting that “[t]he goods associated with the cited registration are
identified as ‘medical implants composed of artificial materials,’”3 Applicant’s sole
argument is based on Applicant’s and Registrant’s goods being used in different
medical fields. Specifically, even though the identification of goods in the cited
registration is not restricted to any specific medical field, Applicant argues that
these goods are not related to its goods because “the cited PARACHUTE product is

3 Appeal Brief, p. 6, 6 TTABVUE 7.
Serial No. 85801792
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a treatment device for congestive heart failure that partitions the damaged muscle
…,”4 while its goods are restricted to use in joint surgery. Relying on In re
Trackmobile Inc., 15 USPQ2d 1152, 1154 (TTAB 1990), Applicant argues that
because the goods identified in the cited registration are “unclear,” technical and
that Registrant’s identification would have a particular meaning to members of the
trade, the Board may consider extrinsic evidence about them. The Trackmobile case
is inapposite here, however, because the meaning of the goods as identified in the
cited registration is clear and the identification is not so technical that we need
extrinsic evidence to understand it. Indeed, the record establishes that a medical
implant is merely “an object or material grafted into the body for prosthetic,
therapeutic, diagnostic or experimental purposes.”5
It is improper to decide the issue of likelihood of confusion
based upon a comparison of applicant's actual goods with
registrant's actual goods. If registrant's goods are broadly
described in its registration so as to include types of goods
which are similar to applicant's goods, then an applicant
in an ex parte case cannot properly argue that, in point of
fact, registrant actually uses its mark on a far more
limited range of goods which range does not include goods
which are similar to applicant's goods.
Id. at 1153.
Applicant’s goods, “suture anchors,” are defined as “a small screw made of metal
or synthetic material that is buried into the bone during some shoulder surgeries.
Sutures or stitches run through an eyelet in the screw, and these are used to repair

4 Id.
5 Exhibit to Office Action dated June 5, 2013 consisting of definition of “implant” from
Dorland’s Medical Dictionary for Health Consumers, copyright 2007 Saunders, implant,
http://medical-dictionary.thefreedictionary.com/implant.
Serial No. 85801792
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soft tissues and hold them to the bone.”6 As the Examining Attorney points out, this
definition establishes that “suture anchors” are implants. This position is supported
by informational material provided by Applicant on its website, which discusses
PEEK Implants and Instruments for Shoulder Arthroscopy:
.

6 Exhibit to Office Action dated June 5, 2013 consisting of definition of “suture anchor” from
Shouldersurgeon.com, “Shoulder vocabulary: medical term definitions,”
http://www.shouldersurgeon.com/shoulder_terminology_vocabulary/.
Serial No. 85801792
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Response to Office Action dated December 4, 2013. This webpage states that “PEEK
implants and instruments for Shoulder Arthroscopy [consist] of POWERLOCK,
PARACHUTE, and BIOPLUG PEEK” (emphasis added). Thus, Applicant’s Class 10
goods are legally identical to the goods in the cited registration.
Based on the foregoing, we find that the Class 10 goods are legally identical and
thus, the second du Pont factor favors a finding of likelihood of confusion with
respect to these goods.
2. Comparison of Applicant’s Class 16 goods with the goods in the
cited registration.
Applicant’s Class 16 goods, “photographs and printed matter, namely brochures,
catalogs, printed information sheets, flyers, printed teaching and instructional
material, excluding apparatus, all in the field of joint surgery” are for informational
and educational/instructional purposes regarding joint surgery, using Applicant’s
suture anchors. The goods in the cited registration are medical implants, which may
also be used in joint surgery.
Thus, while Applicant’s Class 16 goods are not identical or even competitive with
the registered goods, they may be used together and are therefore related. Goods
need not be identical or even competitive to find a likelihood of confusion. See On-
line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475
(Fed. Cir. 2000). The respective goods need only be “related in some manner and/or
if the circumstances surrounding their marketing [be] such that they could give rise
to the mistaken belief that [the goods] emanate from the same source.” Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed.
Serial No. 85801792
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Cir. 2012) quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007).
Consumers will likely view informational and educational/instructional material for
use in joint surgery as coming from the same source as medical implants used in
surgery, which could include joint surgery.
Based on the foregoing, we find that the Class 16 goods are related to the goods
in the cited registration and thus, the second du Pont factor also favors a finding of
likelihood of confusion with respect to these goods.
B. Similarity or Dissimilarity of Marks.
Next, we consider the first du Pont factor, the similarity of the marks. In
comparing the marks we must consider the appearance, sound, connotation and
commercial impression of the marks at issue. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). The emphasis of our analysis must be on the recollection of the
average purchaser who normally retains a general, rather than specific, impression
of trademarks.
Applicant has adopted the entire registered mark (PARACHUTE), prefaced by
its house mark (KARL STORZ). Applicant argues that “[t]he marks in this case are
similar not identical – the addition of the trademark KARL STORZ clearly indicates
the source of Applicant’s goods. The additional wording in Applicant’s mark results
in a different commercial impression.” Appeal Brief, p. 5, 6 TTABVUE 6. To the
contrary, it has long been held that “[w]hen … the common part of the marks is
identical, purchasers familiar with the registrant’s mark are likely to assume that
Serial No. 85801792
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the house mark simply identifies what had previously been an anonymous source.”
In re Fiesta Palms LLC, 85 USPQ2d 1360, 1364 (TTAB 2007) quoting In re Hill-
Behan Lumber Company, 102 USPQ 246, 249-250 (TTAB 1978), in which the Board
stated that:
[F]or purposes herein, the ‘LUMBERJACK’ marks of the
parties are identical. In such a situation, the addition of
applicant's house mark ‘HILL-BEHAN'S’ thereto is not
deemed sufficient to distinguish the marks as a whole and
to avoid confusion in trade. This is especially so when one
considers that a trademark or a service mark identifies an
anonymous source so that the average consumer in the
marketplace is, more often than not, unaware of the
producer of the goods sold under a mark and often doesn't
care, so long as the quality of the goods identified by the
mark remains the same. Thus, if those individuals
familiar with registrant's ‘LUMBERJACK’ products were
to encounter ‘HILL-BEHAN'S LUMBER JACK’ stores at
which lumber products are sold, there is nothing to
preclude them from assuming that ‘HILL-BEHAN’ is the
source of the ‘LUMBERJACK’ products and has
established retail outlets to market them. Whether it be
confusion of source or sponsorship, the likelihood of such
confusion is there and, as a consequence, registrant's
registered mark is a bar to the registration sought by
applicant.
Similarly, in this case, Applicant’s and Registrant’s marks consist of the identical
word PARACHUTE, and Applicant’s mere addition of its house mark, KARL
STORZ, is not sufficient to distinguish the marks as a whole or to avoid confusion.
Rather, the addition of Applicant’s house mark may exacerbate confusion.
Accordingly, we find that the marks are similar and that the first du Pont factor
also favors a finding of likelihood of confusion.
Serial No. 85801792
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C. Conditions under which and buyers to whom sales are made.
Applicant contends that the purchasers of medical apparatus are highly
sophisticated and less prone to confusion. We agree that medical implants and
apparatus are unlikely to be impulse purchases and the purchasers thereof would
be sophisticated. Thus, we find that the sixth du Pont factor weighs against a
finding of likelihood of confusion. However, the legally identical nature of the Class
10 goods, complementary nature of the Class 16 goods and the similarity between
the marks outweighs the impact of this factor. Moreover, because “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 and Trading Corp., 793 F2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986).
D. Conclusion.
After considering all of the evidence properly of record and arguments pertaining
to the du Pont likelihood of confusion factors, we find that there is a likelihood of
confusion between Applicant’s applied-for and Registrant’s registered mark.
Decision: The refusal to register Applicant’s mark KARL STORZ PARACHUTE
for goods in Classes 10 and 16 is affirmed.