Senior Tech-nologies, Inc.

Trademark Trial and Appeal Board

Jun 26, 2001

No. 75508524re (T.T.A.B. Jun. 26, 2001)

2/27/01
Paper No. 10
JQ
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Senior Technologies, Inc.
________
Serial No. 75/508,524
_______
Vincent L. Carney for applicant.
Susan C. Hayash, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______
Before Quinn, Wendel and Drost, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Senior Technologies,
Inc. to register the mark TABS SELECT for “remote patient
position monitors.”1
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act on the
ground that applicant’s mark, when applied to applicant’s
1 Application Serial No. 75/508,524, filed June 24, 1998,
alleging first use on January 5, 1997, and first use in
interstate commerce on October 6, 1997. Applicant owns
Registration No. 1,785,403 for the mark TABS for the same goods
as those identified herein.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/508,524
2
goods, so resembles the previously registered mark SELECT
for “patient monitors”2 as to be likely to cause confusion.
When the refusal to register was made final, applicant
appealed. Applicant and the Examining Attorney have filed
briefs. An oral hearing was not requested.
Applicant contends that the marks, when considered in
their entireties, are not similar. Applicant asserts that
the term “select” is weak, and requests that the Board take
judicial notice of the dictionary definition of the term,
as well as of third-party registrations which include
“SELECT” as a feature thereof. Applicant also contends
that the goods are different, principally relying on a
specimen retrieved from the file of the cited registration.
Applicant further argues that the goods move through
different channels of trade (applicant’s to nursing homes
and registrant’s to clinicians in hospitals) and are the
subjects of a sophisticated purchasing decision.3
The Examining Attorney maintains that the marks are
similar and that the goods are related. The Examining
Attorney has requested that the Board take judicial notice
of the dictionary listings of the terms “select,” “patient”
2 Registration No. 2,169,658, issued June 30, 1998.
3 Applicant’s remarks bearing on its purported priority over the
cited mark are irrelevant in the context of this ex parte appeal.
Ser No. 75/508,524
3
and “monitor.”
Before turning to the merits of the likelihood of
confusion refusal, we must focus our attention on some
evidentiary matters raised by the actions of both applicant
and the Examining Attorney after the appeal was filed.
At the outset, we grant applicant’s and the Examining
Attorney’s requests to take judicial notice of the
dictionary listings. University of Notre Dame du Lac v.
J.C. Gourmet Food Imports Co., 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
Applicant filed, for the first time with its appeal
brief, the declaration of Jolene Ryan, a legal assistant
for applicant’s attorney. The declaration is accompanied
by a Thompson & Thompson trademark search report
(Attachment A), a specimen from the file of the cited
registration (Attachment B), and an excerpt about
registrant’s goods which was retrieved off the Internet
(Attachment C). Applicant essentially asks the Board to
take judicial notice of these materials. In response, the
Examining Attorney objected to the search report because
its source is a private database. The Examining Attorney
made no direct objections to the other evidence, but did
Ser No. 75/508,524
4
not directly refer to the evidence in her brief either.4
Accompanying applicant’s reply brief is a list of seventeen
third-party registrations which, applicant asserts, was
gathered from a TRADEMARKSCAN search report.
As a general rule, evidence submitted with an appeal
brief is untimely. Trademark Rule 2.142(d). In the
present case, as noted above, the Examining Attorney
objected to the search report on other grounds, made no
formal objection to the rest of the untimely submission,
but, in any case, did not discuss the untimely evidence or
otherwise affirmatively treat it as being of record. See:
Trademark Trial and Appeal Board Manual of Procedure,
§1207.03.
The entirety of applicant’s submission obviously is
untimely, and the evidence may be disregarded on this basis
alone. Further, a private search report is insufficient to
make the registrations listed therein of record, and the
Board does not take judicial notice of third-party
registrations. See: Beech Aircraft Corp. v. Lightning
Aircraft Co., 1 USPQ2d 1290 (TTAB 1986). Lastly, the mere
listing of third-party registrations, as was done in
4 The only remark that touches on this is the Examining
Attorney’s statement that “an applicant may not restrict the
scope of its goods and/or the scope of the goods covered in the
registration by extrinsic argument or evidence, for example, as
to the nature or marketing of the goods.” (brief, p. 7)
Ser No. 75/508,524
5
applicant’s reply brief, is insufficient to make such
registrations of record. See: In re Consolidated Cigar
Corp., 35 USPQ2d 1290 (TTAB 1995).
In view thereof, outside of the dictionary evidence,
we have not considered any of the materials submitted for
the first time by applicant after the appeal.
With regard to the Examining Attorney’s actions, the
Board initially notes that the case was reassigned to her,
and that her first involvement herein was the writing of
the appeal brief. In her brief, the Examining Attorney
referred to searches made of the NEXIS database relating to
patient monitors and their use by both hospitals and
nursing homes. The Examining Attorney also cited to the
results of a trademark search she apparently conducted of
the Office’s database (“X-Search”) which, according to the
Examining Attorney, shows the absence of third-party marks
featuring the term “SELECT” for patient monitors.
Applicant, in its reply brief, made no reference to any of
these matters.
While the Board certainly appreciates the Examining
Attorney’s desire to supplement the perceived shortcomings
of the record compiled by her predecessor, the NEXIS and X-
Search materials, upon which the Examining Attorney’s
remarks are based, were not properly made of record.
Ser No. 75/508,524
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Accordingly, any references thereto have not been
considered in making our decision.
We now turn to a determination of the merits of the
appeal which, as a result of our evidentiary rulings above,
is based on a relatively sparse record. Our determination
under Section 2(d) is based on an analysis of all of the
facts in evidence that are relevant to the factors bearing
on the likelihood of confusion issue. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
With respect to the goods, it should be noted that it
is not necessary that the goods be identical or even
competitive in nature in order to support a finding of
likelihood of confusion. It is sufficient that the
circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
under circumstances that would give rise, because of the
marks used in connection therewith, to the mistaken belief
that the goods originate from or are in some way associated
with the same source. In re International Telephone and
Ser No. 75/508,524
7
Telegraph Corp., 197 USPQ 910 (TTAB 1978). Further, in
cases such as this, we must compare the goods as “recited
in applicant’s application vis-à-vis the goods...recited in
[the cited] registration, rather than what the evidence
shows the goods...to be.” Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813,
1815 (Fed. Cir. 1987). See also: In re Elbaum, 211 USPQ
639 (TTAB 1981).
When the goods are compared within the legal
constraints cited above, we find that the goods are related
in that both are used to observe or monitor patients.
Registrant’s “patient monitors,” as broadly identified in
the cited registration, would encompass remote patient
position monitors. Even if, in actuality, the monitors are
specifically different, both are medical devices which
would in all likelihood be encountered by the same classes
of purchasers, including those in hospitals and nursing
homes. In any event the distinctions in trade channels
relied upon by applicant are not reflected in the
respective identifications of goods and, further, are not
borne out by the record. See: In re Trackmobile Inc., 15
USPQ2d 1152 (TTAB 1990).
Insofar as the marks are concerned, we recognize that
the term “select” is a laudatory term signifying a special
Ser No. 75/508,524
8
quality. Although the marks are specifically different,
with applicant’s mark also including applicant’s previously
registered mark TABS, the marks both convey the idea of a
superior quality.5 The addition of the suggestive term
“TABS” in applicant’s mark is insufficient to distinguish
the marks as used in connection with the closely related
patient monitoring products. The marks are sufficiently
similar in terms of appearance, sound and meaning that, as
used on closely related products, confusion among
purchasers is likely to occur.
Although we find it reasonable for applicant to assert
that medical professionals are prone to be sophisticated
purchasers of medical equipment, that sophistication would
not ensure against confusion here given the similarity of
the marks and the closeness of the goods.
Lastly, to the extent that any of the points argued by
applicant cast doubt on our ultimate conclusion on the
issue of likelihood of confusion, we resolve that doubt, as
we must, in favor of the prior registrant. In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed.
Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc.,
5 We also note the meaning of the term “tabs,” as in “keep tabs
on:” “to keep an account of; check on; observe.” The Random
House College Dictionary (1980).
Ser No. 75/508,524
9
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
We conclude that purchasers familiar with registrant’s
“patient monitors” sold under the mark SELECT would be
likely to believe, upon encountering applicant’s mark TABS
SELECT for “remote patient position monitors,” that the
goods originated with or are somehow associated with or
sponsored by the same entity.
Decision: The refusal to register is affirmed.
Ser No. 75/508,524
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