ProCyte Corp.

Trademark Trial and Appeal Board

Nov 17, 1999

No. 75236506 (T.T.A.B. Nov. 17, 1999)

Paper No. 13
EWH/MM
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 17, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re ProCyte Corporation
________
Serial No. 75/236,506
_______
Dennis K. Shelton of Christensen, O’Connor Johnson &
Kindness for ProCyte Corporation.
John Dalier, Trademark Examining Attorney, Law Office 105
(Thomas Howell, Managing Attorney).
_______
Before Simms, Hanak and Walters, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
ProCyte Corporation (applicant) seeks to register
GRAFTCYTE in typed drawing form for “medicated
micronutrient gels, topical solutions, and shampoos, and
wound dressings, all for use in recovery from hair
transplantation procedures.” The application was filed on
Ser No. 75/236,506
2
February 5, 1997, with a claimed first use date of December
3, 1996.
The Examining Attorney 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
likely to cause confusion with the mark GRAFT-SITE,
previously registered in typed drawing form for
“stretchable locating bandage for covering primary bandages
and dressings on the body.” Registration number 1,810,241.
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
considerations are the similarities of the goods and the
similarities of the marks. 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.”)
Ser No. 75/236,506
3
Considering first the goods, applicant’s goods include
wound dressings for use in recovery from hair
transplantation procedures. Registrant’s goods are
stretchable locating bandages for covering primary bandages
and dressings on the body. At the outset, we note that the
terms “dressing” and “bandage” are essentially synonyms.
The term “dressing” is defined as “any of various materials
utilized for covering and protecting a wound. See also
bandage.” Dorland’s Illustrated Medical Dictionary (25th
ed. 1974). This same reference work, in defining the term
“bandage,” makes cross-reference to “dressing.”
In essence, applicant’s goods include a particular
type of wounded dressing or bandage, namely, one for use in
recovery from hair transplantation procedures.
Registrant’s goods are stretchable bandages or dressings
for covering primary bandages and dressings on the body.
Registrant’s goods are not restricted as to where they can
be used on the body or as to what medical procedures they
can be used in connection with. Without providing any
evidentiary support, applicant makes the mere assertion
that "the type of bandage identified in the registration is
not likely to be used in association with appellant’s wound
healing compositions, and vice versa.” (Applicant’s brief
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page 6). We simply disagree. Registrant’s goods are
stretchable locating bandages for covering primary bandages
and dressings on the body. Applicant’s goods include wound
dressings (bandages). Thus, it is entirely possible for
registrant’s stretchable bandages to be used to cover
applicant’s wound dressings (bandages) in order to better
secure applicant’s wound dressings in place. While we do
not take issue with applicant’s contention that
registrant’s bandages and applicant’s wound dressings are
“not interchangeable,” we do find that the two products are
very closely related in that they are both bandages
(dressings) which could be used together. (Applicant’s
brief page 6).
Turning to a consideration of the marks, we note at
the outset that when the goods of the applicant and
registrant are very closely related, the degree of
similarity of the marks necessary to support a finding of
likelihood of confusion declines. Century 21 Real Estate
v. Century Life, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992).
Marks are compared in terms of visual appearance,
pronunciation and meaning or connotation. In terms of
visual appearance, the two marks are very similar in that
Ser No. 75/236,506
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both consist of nine letters with the first five and final
two letters being identical. Applicant argues that “when
viewed side-by-side, the appellant’s and registrant’s marks
are not identical in appearance.” (Applicant’s brief
page 5). As has been repeatedly stated, “side-by-side
comparison [of two marks] is not the [proper legal] test”
for determining likelihood of confusion. Johann Maria v.
Chesebrough-Pond, 470 F.2d 1385, 176 USPQ 199, 200 (CCPA
1972). Consumers rarely have the benefit of comparing
marks on a side-by-side basis. Rather, consumers are more
likely to see one mark and merely retain a “general
recollection” of it. Johann Maria, 176 USPQ at 200. The
inquiry then is whether, upon seeing the second mark,
consumers –- armed with only this “general recollection” of
the first mark –- would confuse the two marks. We believe
that the visual similarities between the two marks in
question are great enough such that there would be a
likelihood of confusion.
Turning to a consideration of the two marks in terms
of pronunciation, we find that they are virtually
identical, especially when one takes into account the fact
that “there is no correct pronunciation of a trademark.”
In re Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA
1969). Obviously, the first portion of both marks (GRAFT)
Ser No. 75/236,506
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would be pronounced in an identical manner. The second
portion of both marks (CYTE and SITE) would both be
SURQRXQFHGDV³V W´6HHWebster’s New World Dictionary,
(2d ed. 1970).
Turning to the third factor of meaning or connotation,
applicant makes the interesting argument “that even marks
which are identical in sound and/or appearance may create
sufficiently different commercial impressions when applied
to the respective parties’ goods or services so that there
is no likelihood of confusion.” (Applicant’s brief page
5). Applicant explains that CYTE is a “medical or
scientific prefix/suffix denoting relationship to a cell.”
(Applicant’s brief page 5, original emphasis). Applicant
then states that SITE “denotes the spacial location of a
structure.” (Applicant’s brief page 5, original emphasis).
The problem with applicant’s argument is that not only can
registrant’s bandages be purchased by ordinary consumers,
but in addition, applicant has conceded that its “goods are
sold by hair transplant surgeons to their patients.”
(Applicant’s brief page 6). Obviously, patients are
ordinary consumers. These ordinary consumers will simply
not understand the term CYTE, which applicant concedes is
Ser No. 75/236,506
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“a medical or scientific prefix/suffix.” (Applicant’s
brief page 5). In short, to ordinary consumers, the two
marks, if they have any meaning at all, will have
essentially the same meaning.
In any event, even if the meanings of the two marks
were somewhat different, given the fact that the marks are
identical in terms of sound and are very similar in terms
of visual appearance, we find that overall, the two marks
are either extremely similar or virtually identical.
Because the marks are, at a minimum, extremely similar
and because registrant’s goods and certain of applicant’s
goods are very closely related, we find that the
contemporaneous use of the two marks is likely to result in
confusion.
One final comment is in order. Applicant has made of
record numerous third-party registrations of marks
containing GRAFT or SITE or CYTE. Two points deserve
mention. First, none of the third-party registrations are
for marks which are even remotely as similar to
registrant’s mark as is applicant’s mark.
Second, “in the absence of any evidence showing the
extent of use of any of such [third-party] marks or whether
any of them are now in use, they provide no basis for
Ser No. 75/236,506
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saying that the marks so registered have had, or may have,
any effect at all on the public mind so as to have a
bearing on likelihood of confusion.” Smith Bros. v. Stone
Mfg., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973).
Decision: The refusal to register is affirmed.
R. L. Simms
E. W. Hanak
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
and Appeal Board