Karl Storz GmbH & Co. KG

Trademark Trial and Appeal Board

May 29, 2015

No. 85767783 (T.T.A.B. May. 29, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 29, 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. 85767783
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Wesley W. Whitmyer, Jr. 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 Mermelstein, Ritchie and Kuczma,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Karl Storz GmbH & Co. KG (“Applicant”) seeks registration on the Principal
Register of the mark KARL STORZ CARDIOFIT (in standard characters) for:
Medical apparatus and instruments, namely surgical
instruments and apparatus in International Class 10, and
Printed material, namely catalogues, magazines, journals,
brochures and informational flyers, letters and sheets in
the field of medical technology; binders; printed teaching
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and instructional manuals in the field of medical
technology; photographs in International Class 16.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 USC § 1052(d), citing Registration No.
3838590 as a bar to registration. Registration No. 3838590 owned by BioControl
Medical Ltd., is for the mark CardioFit (in standard character format) for:
an implantable system consisting of electronic
implantable stimulators, external stimulators,
stimulation electrodes, and stimulation leads for
stimulating neural tissue to treat cardiac pathologies in
International Class 10.2
After the refusal to register was made final, Applicant appealed to this Board,
and Applicant and the Examining Attorney filed briefs. For the reasons set forth
below, the refusal to register is affirmed.
I. Likelihood of Confusion
Applicant contends that in view of the differences between the marks due to the
term KARL STORZ included in its mark, and the differences in the goods covered in
its application versus the cited registration, and also given the sophistication of the
parties, there is no likelihood of confusion.
Our determination under § 2(d) is based on an analysis of all probative facts in
evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567

1 Application Serial No. 85767783 was filed on October 31, 2012, 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. 3838590 issued on August 24, 2010.
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(CCPA 1973); see also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). Not all of the du Pont factors are relevant to every case,
and only factors of significance to the particular mark need be considered. In re
Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010).
We carefully considered all of the evidence of record as it pertains to the relevant
du Pont factors, as well as Applicant’s arguments (including any evidence and
arguments not specifically discussed in this opinion). To the extent that any other
du Pont factors for which no evidence or argument were presented may nonetheless
be applicable, we treat them as neutral.
A. Similarity of the Marks
We consider the first du Pont factor focusing on the similarity or dissimilarity of
the marks in their entireties as to appearance, sound, connotation, and commercial
impression. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012); du Pont, 177 USPQ at 567. In comparing the marks, we are mindful that 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 terms of their
overall commercial impression so that confusion as to the source of the goods offered
under the respective marks is likely to result. San Fernando Elec. Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); In re
Cook Medical Technologies LLC, 105 USPQ2d 1377, 1381 (TTAB 2012).
With respect to the CARDIOFIT portions of the marks, the marks are identical
in appearance, sound, and meaning. However, we must consider the entire marks,
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including the presence of KARL STORZ in Applicant’s mark, in light of the evidence
of record to determine their commercial impressions.
Applicant contends that the addition of its KARL STORZ trademark in its KARL
STORZ CARDIOFIT mark creates a different commercial impression indicating the
source of Applicant’s goods such that it sufficiently distinguishes its mark from the
cited mark and avoids any likelihood of confusion.3 In support of the foregoing,
Applicant argues that: (1) the marks in their entireties convey significantly
different commercial impressions and/or (2) the matter common to the marks is not
likely to be perceived by purchasers as distinguishing source because it is merely
descriptive or diluted.4
As to the first point, Applicant’s KARL STORZ CARDIOFIT mark and
registrant’s CARDIOFIT mark do not convey significantly different commercial
impressions as addressed in more detail below. Turning to the second point, there is
no evidence showing that the cited mark CARDIOFIT is descriptive or dilute.
Applicant argues the marks at issue do not create the same commercial
impression because Applicant’s mark contains additional matter consisting of the
trademark KARL STORZ.5 The mere addition of a term to a registered mark
generally does not obviate the similarity between the marks nor does it overcome a
likelihood of confusion under Trademark Act Section 2(d). See In re Chatam
International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S

3 Appl. Appeal Brf. p. 5 (4 TTABVUE 6).
4 Appl. Appeal Brf. p. 5 (4 TTABVUE 6).
5 Appl. Appeal Brf. p. 5 (4 TTABVUE 6).
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ALE and JOSE GASPAR GOLD); Coca-Cola Bottling Co. v. Jos. E. Seagram &
Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (BENGAL and BENGAL
LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406
(CCPA 1967) (THE LILLY and LILLI ANN); In re Toshiba Medical Systems Corp.,
91 USPQ2d 1266 (TTAB 2009) (TITAN and VANTAGE TITAN); In re El Torito
Restaurants, Inc., 9 USPQ2d 2002 (TTAB 1988) (MACHO and MACHO COMBOS);
In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and
CONFIRMCELLS); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER
IMAGE and CREST CAREER IMAGES); In re Riddle, 225 USPQ 630 (TTAB 1985)
(ACCUTUNE and RICHARD PETTY’S ACCU TUNE).
Moreover, when marks are otherwise virtually the same and in this case they
are identical, the addition of a house mark, or trade name, is more likely to add to
the likelihood of confusion than to distinguish the marks; it is therefore likely that
the two products sold under such marks would be attributed to the same source. In
re Dennison Mfg. Co., 229 USPQ 141, 144 (TTAB 1986) (holding GLUE STIC for
general purpose adhesive in stick form likely to be confused with UHU GLU STIC
for adhesives for paper and stationery); Key West Fragrance & Cosmetic Factory,
Inc. v. Mennen Co., 216 USPQ 168, 170 (TTAB 1982) (holding SKIN SAVERS for
face and throat lotion likely to be confused with MENNEN SKIN SAVER for hand
and body lotion); see Hammermill Paper Co. v. Gulf States Paper Corp., 337 F.2d
662, 663, 143 USPQ 237, 238 (CCPA 1964) (holding HAMMERMILL E-Z CARRY
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PAK and E-Z PAPER PAK for carrying cases or boxes for typewriter or duplicator
paper likely to be confused with E-Z CARI and E-Z PAK and for paper bags).
It has long been held that the addition of a trade name or house mark to a
registered mark does not generally avoid confusion. In re Fiesta Palms LLC, 85
USPQ2d 1360, 1364 (TTAB 2007) citing Menendez v. Holt, 128 U.S. 514, 521 (1888)
(applicant’s house mark is a difference between the marks, but it does not result in
marks that are dissimilar for likelihood of confusion purposes). Customers who
become familiar with Applicant’s mark are likely to assume that it simply identifies
what had previously been an unidentified anonymous source behind registrant’s
mark. Thus, the addition of the KARL STORZ name to the otherwise identical
CARDIOFIT portion of Applicant’s mark does not avoid a likelihood of confusion
with the cited CARDIOFIT mark and instead likely suggests that Applicant’s
products are related to registrant’s products or that registrant’s products are
related to Applicant’s products. See, e.g., In re Riddle, 225 USPQ at 632 (finding
RICHARD PETTY’S ACCU TUNE and design for automotive service centers
specializing in engine tune-ups and oil changes likely to cause confusion with
ACCUTUNE automotive testing equipment) and 4 J. Thomas McCarthy,
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 23:43 (4th ed. Mar. 2015).
Applicant argues, without support, that the common wording “cardiofit” in the
marks at issue is not likely to be perceived by purchasers as a distinguishing source
because it is merely descriptive or diluted.6 This argument is not persuasive. As

6 Appl. Appeal Brf. p. 5 (4 TTABVUE 6).
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evidenced by the copy of the cited registration already made of record, the
CARDIOFIT mark is registered on the Principal Register without a claim of
acquired distinctiveness under Section 2(f).7 Secondly, no evidence has been
introduced showing that the wording “cardiofit” is weak or diluted.
Given the identity of the CARDIOFIT portions of both marks and the absence of
any evidence showing that this term is weak or diluted, we accord the cited mark an
ordinary scope of protection in our likelihood of confusion analysis. King Candy Co.
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974); In
re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982). Even if we were to
assume that registrant’s “CARDIOFIT” mark is weak, “likelihood of confusion is to
be avoided, as much between ‘weak’ marks as between ‘strong’ marks, or as between
a ‘weak’ and ‘strong’ mark.” King Candy Co. v. Eunice King’s Kitchen, 182 USPQ at
109.
In view of the foregoing, the marks are similar in sight, sound, meaning and
commercial impression.
B. Similarity of Goods
We next consider the second du Pont factor, namely, the similarity of the goods.
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).

7 See p. 7 of January 9, 2013 Office Action.
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Here, Applicant’s goods are surgical instruments and apparatus, and printed
materials in the field of medical technology, and the goods identified in the cited
registration are “an implantable system consisting of electronic implantable
stimulators, external stimulators, stimulation electrodes, and stimulation leads for
stimulating neural tissue to treat cardiac pathologies.” Applicant maintains there is
insufficient evidence to conclude that the goods of the parties are sufficiently related
to cause confusion,8 noting a general relationship between the goods at issue is
insufficient to establish a likelihood of confusion.9 Applicant argues the goods at
issue are not related because its goods encompass a broad range of surgical
instruments and are not implantable stimulators whereas registrant’s goods
comprise a narrow product range of an implantable system of electronic implantable
stimulators, external stimulators, stimulation electrodes and stimulation leads
which are not a surgical instrument or apparatus. Therefore, according to
Applicant, its goods are not related to registrant’s “extremely narrow” identification
of goods.10
Applicant’s contention that the goods are not related due to the fact that its
goods encompass a broad range of medical and surgical instruments whereas
registrant’s goods comprise a narrow product range for an implantable system of
stimulators is short-sighted. When analyzing the similarity of the goods, it is not
necessary that the products of the parties be similar or even competitive to support

8 Appl. Appeal Brf. p. 9 (4 TTABVUE 10).
9 Appl. Appeal Brf. p. 7 (4 TTABVUE 8).
10 Appl. Appeal Brf. p. 6 (4 TTABVUE 7).
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a finding of likelihood of confusion. It is enough if they are related in some manner
such that if they were both to be encountered by the same persons such persons
would, because of the marks used thereon, mistakenly assume that they originate
from or that they are in some way associated with the same source. Coach Services,
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir.
2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed.
Cir. 1984); General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d
1584, 1597 (TTAB 2011) judgment set aside on other grounds, 110 USPQ2d 1679
(TTAB 2014); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988).
While Applicant’s goods are broadly described as “surgical instruments and
apparatus,” the evidence submitted by Applicant during prosecution of its
application confirms that its goods are utilized in cardiac surgery. Promotional
brochures submitted by Applicant show its surgical instruments are intended for
use during cardiac surgery, i.e., “CardioFIT – a new Generation of Instruments for
Cardiac Surgery;” “With its CardioFIT series, KARL STORZ has developed
instruments which not only meet the stringent requirements presented by
minimally invasive cardiac surgery but which also . . . .”11 Additionally, Applicant’s
promotional brochures contain information about Applicant’s data management and
documentation systems for digital storage of images from cardiac surgery and
provide references to scientific research regarding the surgical procedures disclosed

11 For example, see pp. 13-21, 33-34 and 50 of the July 8, 2013 Response to Office Action.
Serial No. 85767783
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in the promotional brochures.12 Thus, Applicant’s goods include cardiac surgery
instruments and printed materials featuring information on medical technology
relating to cardiac surgery.
The goods in the cited registration are implantable13 systems for the treatment
of cardiac pathologies. Inasmuch as registrant’s goods are implantable, they may be
placed in the patient during cardiac surgery. Applicant’s surgical instruments and
apparatus, and printed materials, are closely related to registrant’s implantable
systems because they include surgical instruments used during cardiac surgery,
and printed materials featuring information on medical technology concerning
cardiac surgery. Thus, Applicant’s and registrant’s goods are both utilized in the
surgical treatment of cardiac conditions, potentially in a complementary fashion.
That the goods of the parties differ does not control the determination of
likelihood of confusion. In considering the similarity of the goods, the issue is not
likelihood of confusion between the particular goods, but the likelihood of confusion
as to the source or sponsorship of those goods. In re Majestic Distilling, 65 USPQ2d
at 1205; In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).
The evidence obtained from third-party websites shows that implantable medical
devices including stimulation devices and pacemakers as well as surgical cardiac

12 See pp. 28-29, 44-45 and 70-71 of the July 8, 2013 Response to Office Action.
13 See definition of “implant: “any device or material, especially of an inert substance, used
for repairing or replacing part of the body.” based on the Random House Dictionary, ©
Random House, Inc. 2015; http://dictionary.reference.com/browse/implant. The Board
may take judicial notice of dictionary definitions, University of Notre Dame du Lac v. J.C.
Gourmet Food Import Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular
fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
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instruments and apparatus are used to treat cardiac conditions and pathologies
such as arrhythmia and heart failure.14 Even Applicant’s product information shows
use of its proposed mark in connection with surgical cardiac instruments used in
procedures treating cardiac conditions.15 The goods at issue are related because
they are the type of surgical instruments, apparatus and implantable devices that
may be used in connection with treating cardiac conditions. Thus, customers
encountering Applicant’s KARL STORZ CARDIOFIT and the cited registrant’s
CARDIOFIT goods sold under highly similar marks are likely to believe the goods
emanate from the same source.
Where the evidence shows the goods at issue have complementary uses, and
thus are often used together or otherwise purchased by the same purchasers for the
same or related purposes, such goods have generally been found to be sufficiently
related such that confusion would be likely if they are marketed under the same or
similar marks. See In re Martin’s Famous Pastry Shoppe, Inc., 223 USPQ at 1290
(holding bread and cheese to be related because they are often used in combination
and noting that “[s]uch complementary use has long been recognized as a relevant
consideration in determining a likelihood of confusion”); In re Toshiba Medical
Systems, 91 USPQ2d at 1272 (holding medical MRI diagnostic apparatus and
medical ultrasound devices to be related, based in part on the fact that such goods
have complementary purposes because they may be used by the same medical

14 See attachments to January 9, 2013 Office Action, p. 10-11; February 19, 2014 Final
Office Action, pp. 10-11, 16-19, 23-28, 37, 41, 46-47, 51-52, 60-64, 68, 70-74.
15 See attachments to Response to January 9, 2013 Office Action, p. 14.
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personnel of the same patients to treat the same disease). Accordingly, the goods
are, at minimum, complementary. While they may not perform the same functions,
they are related as surgical instruments, apparatus and implantable devices that
are used in cardiac surgery.
In view of the foregoing, we find that Applicant’s and registrant’s goods which
are for use in cardiac surgeries, are complementary and related, supporting a
likelihood of confusion under the second du Pont factor.
C. Channels of Trade and Class(es) of Purchasers
We next consider whether the goods travel in the same trade channels to the
same class of purchasers. Absent restrictions in the application and registration, the
identified goods are “presumed to travel in the same channels of trade to the same
class of purchasers.” In re Viterra Inc., 101 USPQ2d at 1908 (quoting Hewlett-
Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir.
2002)).
Because there are no limitations as to trade channels or classes of purchasers in
the description of goods in either the application at issue or the cited registration,
we must assume that the respective goods travel through all usual trade channels
for such goods, and to all classes of prospective purchasers for those goods. See
Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351 (Fed.
Cir. 2000) (“When the registration does not contain limitations describing a
particular channel of trade or class of customer, the goods or services are assumed
to travel in all normal channels of trade.”); In re Midwest Gaming & Entertainment
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LLC, 106 USPQ2d 1163, 1165 (TTAB 2013); In re Jump Designs, LLC, 80 USPQ2d
1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)).
While the identifications of Applicant’s and registrant’s respective goods are not
restricted to particular trade channels, they are necessarily sold to and utilized by
those involved in the medical field who are responsible for cardiac surgeries. Thus,
Applicant’s and registrant’s trade channels and classes of purchasers are very
similar, if not identical. This overlap in the trade channels and class of purchasers
weighs in favor of a finding of likelihood of confusion under the third and fourth du
Pont factors. In re Wilson, 57 USPQ2d 1863, 1866 (TTAB 2001).
Also, the fact that purchasers are sophisticated or knowledgeable, or exercise a
higher degree of care in a particular field, such as medicine or cardiac surgery, does
not necessarily mean that they are sophisticated or knowledgeable in the field of
trademarks or immune from source confusion, especially in cases such as the
instant one involving highly similar marks and related goods. See, e.g., Stone Lion
Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d. 1317, 110 USPQ2d 1157, 1163
(Fed. Cir. 2014); Top Tobacco LP v. North Atlantic Operating Co., 101 USPQ2d
1163, 1170 (TTAB 2011); In re Decombe, 9 USPQ2d 1812, 1814-1815 (TTAB 1988)
(“Being knowledgeable and/or sophisticated in a particular field does not necessarily
endow one with knowledge and sophistication in connection with the use of
trademarks.”).
Thus, we find that the third du Pont factor regarding the similarity of trade
channels weighs against Applicant. The fourth factor regarding the sophistication of
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the purchasers initially tips in Applicant’s favor given the nature of the goods.
However, such purchasers are not necessarily sophisticated or knowledgeable in the
field of trademarks especially here, where the marks are very similar and the goods
are related, rendering this factor neutral.
D. Conclusion
The marks are similar as they both contain the identical word CARDIOFIT.
While Applicant’s KARL STORZ trademark is a difference between the marks, it
does not result in marks that are dissimilar for likelihood of confusion purposes.
Customers who become familiar with Applicant’s mark are likely to assume that it
simply identifies what had previously been an unidentified anonymous source
behind registrant’s mark. As to the parties’ goods, they are sold or provided through
the same trade channels and used by the same classes of customers in the same
fields of use, and they are similar or complementary in terms of purpose or function,
i.e., utilized in connection with cardiac surgeries. Because the marks are similar,
and the goods are related and travel in the same trade channels, there is a
likelihood of confusion between Applicant’s KARL STORZ CARDIOFIT mark and
the CARDIOFIT mark in the cited registration.
Decision: The refusal to register Applicant’s KARL STORZ CARDIOFIT mark
is affirmed.