Medinol Ltd.

Trademark Trial and Appeal Board

Mar 2, 2016

No. 86291857 (T.T.A.B. Mar. 2, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 2, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Medinol Ltd.
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Serial No. 86291857
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Anne Marie Bossart of Cadwalader, Wickersham & Taft LLP,
for Medinol Ltd.
Christopher Reams, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
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Before Mermelstein, Bergsman and Lynch,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Medinol Ltd. (“Applicant”) seeks registration on the Principal Register of the
mark ASSURE (in standard characters) for “stents; angioplasty balloons,” 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), on the ground that
Applicant’s mark so resembles the registered marks listed below, both for “devices

1 Application Serial No. 86291857 was filed on May 27, 2014, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1052(b).
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and accessories used in intravascular and peripheral procedures, namely, balloon
catheters, guide catheters, catheters, stents and guidewires,” in Class 10, as to be
likely to cause confusion.
1. Registration No. 2655089 for the mark ASSURANT, in typed drawing form;2
and
2. Registration No. 4218002 for the mark ASSURANT COBALT, in standard
character form.3
The cited registrations are owned by the same entity.
After the Examining Attorney made the refusal final, Applicant appealed to this
Board. We affirm the refusal to register.
Our determination under Section 2(d) is based on an analysis of all of the
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 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”).
A. The similarity or dissimilarity and nature of the goods.

2 Registered on November 26, 2002; renewed.
3 Registered on October 2, 2012.
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Applicant is seeking to register its mark for, inter alia, stents and the
description of goods in the cited registration includes stents. Thus, the goods are in
part identical. Under this du Pont factor, the Trademark Examining Attorney need
not prove, and we need not find, similarity as to each and every product listed in the
description of goods. It is sufficient for a refusal based on likelihood of confusion
that relatedness is established for any item encompassed by the identification of
goods in a particular class in the application. Tuxedo Monopoly, Inc. v. General
Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Inter IKEA Sys.
B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); General Mills Inc. v. Fage
Dairy Processing Industry SA, 100 USPQ2d 1584, 1588 n.1 (TTAB 2011), judgment
set aside on other grounds, 2014 WL 343267 (TTAB Jan. 22, 2014); Apple Computer
v. TVNET.Net, Inc., 90 USPQ2d 1393, 1397 (TTAB 2007).
B. The established, likely-to-continue channels of trade.
Because the goods described in the application and the cited registration are in
part identical, we must presume that the channels of trade and classes of
purchasers are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) (legally identical goods are presumed to travel in same
channels of trade to same class of purchasers); In re Yawata Iron & Steel Co., 403
F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods,
the channels of trade and classes of purchasers are considered to be the same);
United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014);
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American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011).
C. The similarity or dissimilarity of the marks.
We now turn to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In comparing the marks, we are
mindful that where, as here, the goods are in part identical, the degree of similarity
necessary to find likelihood of confusion need not be as great as where there is a
recognizable disparity between the goods. Coach Servs., Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007);
Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323,
1325 (TTAB 2007).
“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1721 (Fed. Cir. 2012). See also San Fernando Electric Mfg. Co. v.
JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
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Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d
mem., 972 F.2d 1353 (Fed. Cir. 1992).
Because the mark ASSURANT COBALT arguably contains an additional point
of difference with Applicant's mark ASSURE, we confine our analysis to the issue of
likelihood of confusion between Applicant's mark ASSURE and the cited
registration for the mark ASSURANT. That is, if confusion is likely between those
marks, there is no need for us to consider the likelihood of confusion with
ASSURANT COBALT, while if there is no likelihood of confusion between
Applicant's mark ASSURE and ASSURANT, then there would be no likelihood of
confusion with ASSURANT COBALT. See, e.g., In re Max Capital Group Ltd., 93
USPQ2d 1243, 1245 (TTAB 2010).
The marks at issue are ASSURE and ASSURANT. The marks are similar in
appearance and sound in that they share the first two syllables as shown below:
Assure as-sure \ə-ˈshu̇r\
Assurant as-sure-ant \ə-ˈshu̇r-ant\
The word “Assure” is a verb that is defined, inter alia, as follows:
1: to make safe (as from risks or against overthrow):
insure;
2: To give confidence to.4
While ASSURANT is a coined term, the word “Assurance” is a noun that is
defined, inter alia, as follows:

4 Merriam-Webster online dictionary (m-w.com). See also The American Heritage
Dictionary of the English Language online (5th ed. 2014) (no URL provided). Both
dictionary entries were attached to the January 13, 2015 Office Action.
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1. a positive declaration intended to give confidence:
He received assurances of support for the project.
2. promise or pledge; guaranty; surety:
He gave his assurance that the job would be done.
3. full confidence; freedom from doubt; certainty:
to act in the assurance of success.5
The suffix “-ant” is defined in part as “one that performs (a specified action): a
personal or impersonal agent ” or a “thing that promotes (a
specified action or process) < expectorant>.”6 According to the usage note in The
American Heritage Dictionary of the English Language, “assure” is used “in
the sense of ‘to set the mind at rest.’”7 Thus, an “Assurant” is one who gives
confidence to or makes safe and it has a similar meaning and engenders a similar
commercial impression as the word “Assure.”
Applicant argues that the marks are not similar because they have different
numbers of letters, ASSURANT is a coined word, and the marks take the form of
different parts of speech.8 However, as indicated above, the proper test is not a side-
by-side, point-by-point comparison of similarities and differences. See Procter &

5 Dictionary.com derived from the Random House Dictionary (2016). The Board may
take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet
Food Imp. 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 Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014); Threshold.TV
Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull
GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
6 Merriam-Webster online dictionary (merriam-webster.com). See also Dictionary.com
derived from the Random House Dictionary (2016).
7 January 13, 2015 Office Action.
8 4 TTABVUE 6.
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Gamble Co. v. Conway, 419 F.2d 1332, 164 USPQ 301, 303 (CCPA 1970) (“the
cardinal consideration here is the impact of the marks as used on the basis of
conditions and circumstances surrounding the purchase of the goods of the parties
in the market place.”); Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ
335, 344 (TTAB 1980) (“in the normal environment of the marketplace where
purchases are actually made, purchasers and prospective purchasers would not
usually have the opportunity for a careful examination of these marks in minute
detail. An individual relies on the recollection of the various marks that he has
previously seen in the marketplace and, more frequently than not … his recollection
is not obscured with minute details or specific characteristics of the marks, but is
determined by an overall or general impression of the many and various marks that
encompass him in his daily living experiences.”). While the marks are not identical,
we find that the similarities outweigh the differences.
We find that the marks ASSURE and ASSURANT are similar in terms of their
appearance, sound, connotation and commercial impression.
D. The conditions under which and buyers to whom sales are made, i.e.,
“impulse” vs. careful, sophisticated purchasing.
Applicant argues, without evidentiary support, that because each mark is used
to identify medical devices, purchasers of these products exercise a great deal of
care in purchasing the products.9 Given the nature of the goods, however, it is

9 4 TTABVUE 4. Applicant further asserts that “[t]he high level of sophistication and care
taken by medical purchasers is well-established.” 4 TTABVUE 5. However, Applicant did
not submit any evidence regarding how purchasers of stents and angioplasty balloons make
their purchasing decisions and prior cases have precedential value only to the extent that
Serial No. 86291857
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reasonable for us to assume that the relevant purchasers are likely to exercise a
high degree of care when it comes to buying and using stents in performing medical
procedures. Regardless, it is settled that even sophisticated purchasers are not
immune from source confusion, especially in cases such as the instant one involving
similar marks and in part identical goods. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000); In re Research Trading Corp.,
793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (citing Carlisle Chemical Works,
Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)
(“Human memories even of discriminating purchasers … are not infallible.”)). See
also Kos Pharmaceuticals Inc. v. Andrx Corp., 369 F.3d 700, 70 USPQ2d 1874, 1887-
88 (3d Cir. 2004) (“These trained professionals [doctors, nurses and pharmacists]
may be expected to be knowledgeable about, and to exercise care in distinguishing
between, medicines. We have emphasized a countervailing concern that weighs
against allowing the expertise of physicians and pharmacists to trump other factors
in assessing the likelihood of confusion in drug cases … [P]hysicians are not
immune from confusion or mistake…. There is no reason to believe that medical
expertise as to products will obviate confusion as to source or affiliation or other
factors affecting goodwill.” (citations omitted)). We find that the similarities

they may involve similar facts. See In re Fleet-Wing Corp., 188 F.2d 476, 89 USPQ 369, 370
(CCPA 1951) (“It may be said at the outset that in cases like that at bar where the
registration of one mark over a similar mark for goods of the same class is involved, there is
rarely any decision of any court that is sufficiently analogous to be absolutely controlling. …
Where the circumstances in a decided case differ, even only to a slight degree, from those in
a case to be decided, it is often difficult to determine just what effect those differences
should be given.”); In re Jeep Corp., 222 USPQ 333, 335 n.2 (TTAB 1984). Because
Applicant did not submit any evidence regarding the degree of consumer care, the cases
cited by Applicant do not have much value.
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between the marks and the goods sold thereunder outweigh any sophisticated
purchasing decision, especially in the absence of evidence relating to the degree of
care in making the decision. See HRL Associates, Inc. v. Weiss Associates, Inc., 12
USPQ2d 1819 (TTAB 1989), aff'd, Weiss Associates, Inc. v. HRL Associates, Inc., 902
F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks
outweigh sophisticated purchasers, careful purchasing decision, and expensive
goods). Thus, this factor is given less weight in view of the similarities between the
marks and the goods.
E. Balancing the factors.
Because the marks are similar, the goods are in part identical, and we must
presume that the goods move in the same channels of trade, we find that
Applicant’s mark ASSURE for “stents; angioplasty balloons” is likely to cause
confusion with the registered mark ASSURANT for “devices and accessories used in
intravascular and peripheral procedures, namely, balloon catheters, guide
catheters, catheters, stents and guidewires.”
Decision: The refusal to register Applicant’s mark ASSURE is affirmed.