Pedifix, Inc.

Trademark Trial and Appeal Board

Aug 22, 2014

No. 85074999 (T.T.A.B. Aug. 22, 2014)

Mailed: August 22, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Pedifix, Inc.
________

Serial Nos. 85074999 and 85075017
_______

David B. Kirschstein of Kirschstein, Israel, Schiffmiller & Pieroni, P.C.,
for Pedifix, Inc.

Sara N. Benjamin, Trademark Examining Attorney, Law Office 110
Chris A.F. Pedersen, Managing Attorney.
_______

Before Bucher, Cataldo and Adlin,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Pedifix, Inc. (“Applicant”) filed two use-based applications to register
the marks DEXTERITY1 and DEXTERITY BY PEDIFIX2 (standard
characters) for the goods set forth below:
silicone gel sheeting for the treatment of scars;
support bandages, namely, wearable pads for the
hands for use in cushioning and protecting the
metacarpal heads and to protect the thumb and
other digits from forceful trauma, pressure, shock

1 Serial No. 85074999 was filed on June 30, 2010.
2 Serial No. 85075017 was also filed on June 30, 2010.
This Opinion is not a
Precedent of the TTAB
Serial Nos. 85074999 and 85075017
2
and shear; support bandages used to cushion the
base of the thumb and reduce tenderness over
palmar incisions, finger support bandages, finger
guards for medical purposes; exercise articles for
rehabilitation and therapeutic purposes, namely,
polymer gel spheres for muscular rehabilitation;
pads for preventing pressure sores; compression
sleeve for treating swelling and circulatory
disorders, anti-inflammatory gel pad for treating
sports injuries and tissue trauma; gel-based joint
protector sleeves for the hands, thumb and wrists
for medical purposes; carpal tunnel relief sleeves,
terrycloth gloves and mittens with gel inserts for
use in heat therapy for the hands
in Class 10.
The Trademark Examining Attorney refused registration to both
applications under Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§ 1052(d), on the ground that Applicant’s mark so resembles the registered
marks:
DEXTERITY (standard characters) for
medical examination and surgical gloves; disposable medical
gloves,

in Class 10;3 and
DEXTERITE (standard characters) for
articulated and motor driven instruments for use in urology,
gynecology, vascular, cardiac and gastrointestinal laparoscopic
surgery; artificial limbs, eyes and teeth; orthopaedic articles,
namely, orthopedic braces; robotic surgical apparatus and
instruments, namely, surgical articulated and motor driven
instruments; computerized apparatus and instruments for
surgical manipulation, namely, surgical articulated and motor
driven instruments; articulated and motor driven arms for

3 Registration No. 3994623, issued to SmartHealth, Inc. on July 12, 2011.
Serial Nos. 85074999 and 85075017
3
surgical manipulation; electrical surgical apparatus and
instruments, namely, surgical articulated and motor driven
instruments; jointed and motorised surgical apparatus and
instruments for endoscopic and laparoscopic surgery (emphasis
added)
in Class 104 that registration of Applicant’s mark would be likely to cause
confusion among consumers as to the source of the goods.
When the refusal to register was made final in both cases, Applicant
appealed. Applicant and the Examining Attorney filed briefs.5
Proceedings Consolidated
When, as here, Applicant has filed ex parte appeals to the Board in two
co-pending applications, and the cases involve common issues of law or fact,
the Board, upon request by the Applicant or Examining Attorney or upon its
own initiative, may order the consolidation of the appeals for purposes of
briefing, oral hearing, and/or final decision. TBMP § 1214 (2014). See also,
e.g., In re Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012) (Board sua sponte
consolidated two appeals); In re Country Music Association, Inc., 100 USPQ2d
1824, 1827 (TTAB 2011) (same); In re Bacardi & Co. Ltd., 48 USPQ2d 1031,
1033 (TTAB 1997) (Board sua sponte considered appeals in five applications
together and rendered single opinion). Accordingly, the Board consolidates

4 Registration No. 4273785, issued to Dexterite Surgical January 15, 2013. The
English translation of the foreign word in the mark is “DEXTERITY.” The
registration also recites goods in Class 9.
5 The attachments to Applicant’s brief will be given no consideration. To the extent
they were not made of record prior to appeal, they are untimely. See Trademark
Rule 2.141(d). To the extent they were timely made of record during prosecution,
they are duplicative and unnecessary.
Serial Nos. 85074999 and 85075017
4
these appeals. References to the record refer to Application Serial No.
85074999 unless otherwise indicated.
Likelihood of Confusion
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 goods. 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”). These factors, and any other relevant du Pont
factors in the proceeding now before us, will be considered in this decision.
‘785 Reg.
For purposes of our analysis of the du Pont factors as they apply to the
instant refusal to register, we will concentrate our discussion on cited
Registration No. 4273785 (‘785 Reg.) for the mark DEXTERITE (standard
characters) for goods including “orthopaedic articles, namely, orthopedic
braces.” We find this registration to be the most relevant for our du Pont
analysis, and we proceed accordingly. Since this is the most relevant
Serial Nos. 85074999 and 85075017
5
registration, if we find a likelihood of confusion, we need not find it as to the
other. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB
2010).
The similarity or dissimilarity of the marks in terms of appearance,
sound, connotation and commercial impression and the strength of the
mark in the cited registration.

We turn first 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. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). 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 or services offered under the respective
marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d
unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
The mark in the ‘785 Reg. is DEXTERITE. The mark in application
Serial No. 85074999, DEXTERITY, is identical to the registered mark in
meaning and nearly identical in appearance. The sole difference between the
marks is in the last letter, which may go unnoticed by consumers. Applicant
Serial Nos. 85074999 and 85075017
6
makes the speculative argument6 that consumers would pronounce the mark
DEXTERITE as “dexteright” in English or “dexteree” in French. However, it
is settled that there is no correct pronunciation of trademarks, and the two
marks may well be verbalized in a very similar manner by consumers. Cf. In
re Teradata Corp., 223 USPQ 361, 362 (TTAB 1984) (“as we have said many
times, there is no ‘correct’ pronunciation of a trademark”). As a result, we
find the marks DEXTERITY and DEXTERITE to be nearly identical in
appearance, meaning, sound and that, overall, the marks convey highly
similar commercial impressions.
For the reasons discussed above, the mark DEXTERITE is similar to
the mark in application Serial No. 85075017, DEXTERITY BY PEDIFIX, to
the extent that DEXTERITE is nearly identical to DEXTERITY in
appearance, meaning and sound. However, our analysis of the similarity or
dissimilarity of the marks cannot be predicated on dissecting the marks into
their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). See also Franklin Mint Corp. V. Master
Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 234 (CCPA 1981) (“It is axiomatic
that a mark should not be dissected and considered piecemeal; rather, it must
be considered as a whole in determining likelihood of confusion”).

6 Brief, p. 8.
Serial Nos. 85074999 and 85075017
7
Applicant attempts to distinguish its mark DEXTERITY BY PEDIFIX
from Registrant’s mark DEXTERITE by adding “BY PEDIFIX.” However,
rather than distinguishing the marks, Applicant’s addition of “BY PEDIFIX”
may lead consumers already familiar with Registrant’s mark DEXTERITE to
mistakenly believe that DEXTERITY BY PEDIFIX is Registrant’s mark, and
that Registrant has simply added its house mark PEDIFIX to its mark
DEXTERITE. As noted above, consumers are not likely to note the difference
in the last letter of DEXTERITE/DEXTERITY. As for those consumers
familiar with Applicant’s mark, upon encountering Registrant’s mark they
may mistakenly believe that the goods emanate from the same source and
that “BY PEDIFIX” merely further identifies that single source. See In re
Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986) (SPARKS BY
SASSAFRAS is similar to SPARKS). See also Sakes & Co. v. TFM Indus.,
Inc., 5 USPQ2d 1762, 1764 (TTAB 1987) (FOLIO BY FIRE ISLANDER is
similar to FOLIO); In re Dennison, 220 USPQ 1015, 1016 (TTAB 1983)
(KANGAROO is similar to KANGAROO BY DENNISON). In other words, we
find that consumers are likely to view the marks as variations on each other,
but pointing to a common source. See In Re Mighty
Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260
(Fed. Cir. 2010) (ML is likely to be perceived as a
shortened version of ML MARK LEES, as shown
at right.).

Serial Nos. 85074999 and 85075017
8
As a result, we find that DEXTERITE and DEXTERITY BY PEDIFIX
are more similar than dissimilar in appearance, sound, meaning and overall
commercial impression.
Applicant argues7 that the term “dexterity” is “somewhat suggestive”
of the goods identified in the ‘785 Reg. and that the mark DEXTERITE
“should not be granted such a broad scope as to preclude registration of
applicant’s mark which also has a suggestive aspect in some respects.”8
However, even if we accept that “dexterity” suggests a quality of Registrant’s
goods, there is nothing in the record to support a finding that such meaning
would not also apply to the goods of Applicant. In other words, the term
“dexterity” appears to have an identical meaning as applied to the goods
identified in both Applicant’s application and the cited registration. As a
result, we find that even if the cited mark is suggestive, it is not so weak that
Applicant’s similar marks are entitled to registration.
Moreover, to the extent that Applicant’s allegations constitute a
collateral attack on the cited registration, they are impermissible. Section
7(b) of the Trademark Act provides that a certificate of registration on the
Principal Register shall be prima facie evidence of the validity of the
registration, of the registrant’s ownership of the mark and of the registrant’s
exclusive right to use the mark in connection with the goods or services

7 Brief, p. 11.
8 Id.

Serial Nos. 85074999 and 85075017
9
identified in the certificate. During ex parte prosecution, including an ex
parte appeal, an applicant will not be heard on matters that constitute a
collateral attack on the cited registration (e.g., a registrant’s nonuse of the
mark). In re Dixie Restaurants, 41 USPQ2d at 1534; and In re Peebles Inc.,
23 USPQ2d 1795, 1797 n.5 (TTAB 1992). See TMEP § 1207.01(d)(iv) (April
2014).
In view of the foregoing, we find that the marks are similar in terms of
appearance, sound, connotation and commercial impression.
The relationship of the goods, the established likely-to-continue
channels of trade and classes of consumers.

Applicant is seeking to register its marks for the following goods:
silicone gel sheeting for the treatment of scars;
support bandages, namely, wearable pads for the
hands for use in cushioning and protecting the
metacarpal heads and to protect the thumb and
other digits from forceful trauma, pressure, shock
and shear; support bandages used to cushion the
base of the thumb and reduce tenderness over
palmar incisions, finger support bandages, finger
guards for medical purposes; exercise articles for
rehabilitation and therapeutic purposes, namely,
polymer gel spheres for muscular rehabilitation;
pads for preventing pressure sores; compression
sleeve for treating swelling and circulatory
disorders, anti-inflammatory gel pad for treating
sports injuries and tissue trauma; gel-based joint
protector sleeves for the hands, thumb and wrists
for medical purposes; carpal tunnel relief sleeves,
terrycloth gloves and mittens with gel inserts for
use in heat therapy for the hands.
Serial Nos. 85074999 and 85075017
10
The goods identified in Class 10 in the ‘785 Reg. largely consist of motorized
and robotic surgical instruments, but also include “orthopaedic articles,
namely, orthopedic braces.”
In support of her contention that the goods are related, the Examining
Attorney made of record9 the following definition of “orthopedic” – “relating to
the medical treatment of injuries and diseases; designed to be used by people
with injuries or diseases affecting their bones and muscles.”10 In addition, the
Examining Attorney submitted screenshots from the following commercial
websites offering goods under the same mark that are similar in nature to
those of both Applicant and Registrant, including the following
representative samples:11
pushstore.com/ (orthopedic, medical, support and sport braces);

hightidehealth.com/ (orthopedic braces, carpal tunnel relief sleeves and
supports, heel and elbow protector pads, compression support sleeves,
gel finger protectors);

medsupports.com/ (braces, supports, wraps and thumb immobilizers
for carpal tunnel syndrome, arthritis, thumb injuries);

metromedicalonline.com/ (compression wrist supports, wrist splints,
orthopedic wrist braces, warming wrist supports, pressure pads and
sheets);

bell-horn.com/ (thumb splits, wrist/thumb wraps, orthopedic wrist
braces, carpal tunnel wrist supports); and

9 September 17, 2013 Office Action.
10 Id. Macmillandictionary.com/American/orthopedic
11 Id., Attachments 1-184.
Serial Nos. 85074999 and 85075017
11
meullersportsmed.com/ (orthopedic wrist braces and sleeves, thumb
stabilizers, compression sleeves).

These websites demonstrate that certain of Applicant’s type of goods and
Registrant’s type of orthopedic braces are marketed and sold together under
a single mark.
In addition, the Examining Attorney made of record a number of live,
use-based, third-party registrations, of which the following identify goods
listed in both applications and the ‘785 Reg.12 The relevant registrations are
listed below.13
Registration No. 2618868 for, inter alia, orthopedic and
therapeutic musculoskeletal braces and supports, bandages,
namely, elastic, compression and musculoskeletal support
bandages;

Registration No. 3444531 for orthopedic braces, orthopedic
support bandages, namely, wearable pads for the hands,
orthopedic support bandages; orthopedic supports;

Registration No. 3695171 for, inter alia, orthopedic braces,
cohesive support bandages, elastic bandages;

Registration No. 3734249 for, inter alia, orthopedic braces,
orthopedic support bandages, orthopedic supports; and

Registration No. 4225659 for, inter alia, orthopedic braces,
support bandages.

12 Id.
13 We have not included the entire recitation of goods or services for each of the
registrations. Only the goods that are in Applicant’s applications and the ‘785 Reg.
are listed. We did not consider registrations based on Section 44 and not on use in
commerce.

Serial Nos. 85074999 and 85075017
12
Third-party registrations which individually cover a number of
different goods that are based on use in commerce have some probative value
to the extent that they serve to suggest that the listed goods are of a type
which may emanate from the same source. See In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-86; In re Mucky Duck Mustard Co. Inc., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988).
Based upon the evidence of record, we find that consumers would
readily perceive certain of Applicant’s goods, namely, its sleeves, supports
and pads, and Registrant’s orthopedic braces as being related. Moreover, it is
not necessary for the Examining Attorney to prove likelihood of confusion
with respect to each item of goods identified in Applicant’s single-class
application; if there is likelihood of confusion with respect to any of
Applicant’s identified goods, the refusal of registration must be affirmed. See
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981). The evidence of record in this case indicates that the
goods of Applicant and Registrant are commercially related medical and
therapeutic goods that are marketed and sold together under a common
designation, and thus may be encountered together by consumers. The
similarity of the goods is also a factor that weighs in favor of a finding of
likelihood of confusion.
In addition, neither Applicant’s nor Registrant’s identification of goods
recites any limitations on the channels of trade in which the goods may be
Serial Nos. 85074999 and 85075017
13
encountered or the classes of consumers to whom they may be marketed.
Absent any such restrictions, the goods are presumed to move in all normal
channels of trade and be available to all classes of potential consumers of
such goods. See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). In each case,
the customers would include surgery and post-surgical therapy providers and
patients; and the channels of trade would include hospitals, medical facilities
and doctor’s offices as well as providers of medical and therapeutic supplies
including retailers offering their goods through the Internet, and drug stores.
The overlap in trade channels and classes of purchasers are factors
that further weigh in favor of a finding of likelihood of confusion.
Degree of consumer care.
Applicant argues that Registrant’s goods are purchased by “careful,
knowledgeable medical professionals as opposed to the ordinary public which
purchases applicant’s over-the-counter products.”14
However, even if we accept that many of Registrant’s goods are
surgical devices that would be the subject of careful purchase by a
knowledgeable professional, Registrant’s goods also include “orthopedic
braces” that may be purchased by ordinary consumers exercising an ordinary
degree of care. See, e.g., In re Pierce Foods Corporation, 230 USPQ 307, 309
(TTAB 1986) (“Nor are we persuaded by applicant’s arguments that confusion
is unlikely because the purchasers are careful and sophisticated. Applicant’s

14 Applicant’s Brief, p. 7.
Serial Nos. 85074999 and 85075017
14
institutional purchasers could well range in size from a large motel and
restaurant chain to a relatively small restaurant. Therefore, not all of
applicant's purchasers can be expected to be as highly discriminating as
applicant contends. Also, even a sophisticated purchaser may not necessarily
be sophisticated concerning trademarks and therefore, able to avoid being
confused with respect to source.”).
In view of the foregoing, we find that the degree of care factor is at best
neutral.
Balancing the factors.
In view of the facts that the marks are similar, certain of the goods are
related and that the goods move in the same channels of trade and are
marketed to the same consumers, we find that a likelihood of confusion exists
between the marks and goods identified in both involved applications and the
mark and goods in the ‘785 Reg. In view thereof, we need not consider the
refusal based on Registration No. 3994623.
Decision: The refusal to register application Serial Nos. 85074999 and
85075017 on the basis of Registration No. 4273785 is affirmed.