Sensor-Medics Corp.

Trademark Trial and Appeal Board

Jul 30, 2004

No. 76376364 (T.T.A.B. Jul. 30, 2004)

Mailed: July 30, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re SensorMedics Corporation
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Serial No. 76376364
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Jeffrey M. Olson and Samuel N. Tiu of Sidley Austin Brown &
Wood for SensorMedics Corporation.
Ronald McMorrow, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
____________
Before Simms, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
SensorMedics Corporation has filed an application to
register the mark CONSTELLATION SERIES on the Principal
Register for, as amended, “home care medical devices for the
delivery of continuous positive airway pressure to patients
for treatment of sleep apnea,” in International Class 10.1
In response to a requirement by the Examining Attorney,

1 Serial No. 76376364, filed February 27, 2002, based on an allegation
of a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 76376364
2
applicant submitted a disclaimer of SERIES apart from the
mark as a whole.
The Trademark Examining Attorney has issued a final
refusal to register under Section 2(d) of the Trademark Act,
15 U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark CONSTELLATION, previously registered for
“medical apparatus, namely, medical catheters for diagnostic
and/or therapeutic uses,”2 that, if used on or in connection
with applicant’s goods, it would be likely to cause
confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We reverse the refusal to register.
The Examining Attorney contends that the marks are
essentially identical because the additional word SERIES in
applicant’s mark is a generic term and does not have any
source-indicating significance. The Examining Attorney
submitted a dictionary definition of “series” as “a number
of similar or related events or things, one following
another” (Cambridge Dictionary of American English, online
edition); and copies of numerous third-party registrations
for medical and dental products wherein the term SERIES is
disclaimed.

2 Registration No. 2,044,221 issued March 11, 1997, to EP Technologies,
Inc., in International Class 10. [Sections 8 and 15 affidavits accepted
and acknowledged, respectively.]
Serial No. 76376364
3
Regarding the respective goods, the Examining Attorney
contends that medical devices for treatment of sleep apnea
and catheters are related goods that often emanate from the
same source; that some of the purchasers of both goods are
the same because applicant’s product must be set up by a
medical professional; that the difference in price of the
respective goods is not persuasive because the same entities
produce both expensive and inexpensive medical devices; and
that applicant’s identification of goods is sufficiently
broad to encompass registrant’s catheters for use in the
treatment of respiratory disorders. In support of his
position, the Examining Attorney submitted copies of two
third-party registrations owned by a single entity for goods
identified as “medical apparatus and instruments, namely,
airway respiratory catheters, tubes and positive airway
pressure equipment”; two pending applications for numerous
medical products, including “nasal CPAP machines” and
“suction catheters”; numerous third-party registrations for
goods including catheters used in connection with
respiratory disorders; a third-party registration for heart-
related medical equipment including catheters; and five
excerpts of articles retrieved from the Lexis/Nexis
database. Three of the five excerpts were too short to
understand the context or nature of the article and, thus,
are of no probative value. The following two excerpts are
Serial No. 76376364
4
sufficient to be of some probative value, although we note
that the first article pertains to use of a CPAP mask in
connection with a procedure that is likely performed in a
hospital or clinic setting:
Headline: Prospective randomized trial comparing
oxygen administration during nasal flexible
bronchoscopy …
Methods of supplemental oxygen delivery during FB
include nasal cannula, Venturi mask, continuous
positive airway pressure mask, and pharyngeal
catheter.
[Chest, November 1, 2001.]
Headline: Elder Pharmaceuticals: In need of
strong medicine.
Instruments and equipment division: The company
also imports and sells various medical equipment
and instruments like oxygen concentrators, CPAP
units, bone imagers, nebulisers, heart pacemakers
and related products like catheters, guidewires,
etc.
[The Economic Times, April 9, 2001.]
Applicant contends that, while both marks include the
term CONSTELLATION, applicant’s mark is not identical to the
registered mark; that its unitary mark CONSTELLATION SERIES
is not merely descriptive of applicant’s goods; and that its
mark evokes a different commercial impression from the
registered mark because it “suggests a series of
constellations rather than the constellation.” [Brief, p.
11.]
Applicant contends that the respective goods are quite
different; that the channels of trade and purchasers are
Serial No. 76376364
5
different; that the cost of each of the products is
significantly different; and that, because its products are
expensive, they are purchased with great care. Applicant
submitted the declaration of Tim Quinn, vice president of
applicant’s related or parent company, wherein Mr. Quinn
made the following statements:
[Applicant’s] CPAP devices for treatment of sleep
apnea are sold and used in the home care market.
The treatment procedure is performed within the
home environment wherein the patient, before going
to sleep, puts on a face, mouth, or nasal mask
connected to a source of continuous positive
airway pressure (“CPCP”). The positive airway
pressure delivered to the patient acts as a
pneumatic splint and opens up the airways
preventing snoring and apnea events during sleep.
No catheters are used with this procedure. Also,
the use of the device does not require the
assistance of any medical personnel, except for
the initial set up and training of the patient by
a trained medical personnel.
To my knowledge, catheters such as suction
catheters or airway respiratory catheters are
rarely sold or used in the home care market.
Rather, they are used within hospital or other in-
patient clinical settings. They also require
administration by a highly trained medical
professional because their uses are associated
with invasive medical procedures.
To my knowledge, electrophysiology mapping
catheters for use in electrical mapping of the
heart are specialized catheters that are used only
in hospitals with specialized electrophysiology
laboratories. These specialized catheters are
also not sold or used in the home care market.
The price of a CPAP device ranges from about two
hundred fifty dollars to about fifteen hundred
dollars. In contrast, catheters such as suction
catheters used with ventilators typically sell for
Serial No. 76376364
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less than a dollar each and are sold to hospitals
in bulk.
In further support of its position, applicant submitted
a dictionary definition of “catheter” as “a tubular medical
device for insertion into canals, vessels, passageways, or
body cavities usually to permit injection or withdrawal of
fluids or to keep a passage open” (Merriam Webster
Dictionary, online edition).
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 likelihood of
confusion issue. See In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In considering the evidence of
record on these factors, we keep in mind that “[t]he
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.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976); In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); and In
re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein. The factors deemed
pertinent in this proceeding are discussed below.
Serial No. 76376364
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We turn, first, to a determination of whether
applicant’s mark and the registered mark, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. 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
impressions that confusion as to the source of the goods or
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore,
although the marks at issue must be considered in their
entireties, it is well settled that one feature of a mark
may be more significant than another, and it is not improper
to give more weight to this dominant feature in determining
the commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
In this case, applicant’s mark consists of the
registered mark in its entirety, CONSTELLATION, with the
addition of the word SERIES, i.e., CONSTELLATION SERIES.
CONSTELLATION is an arbitrary term in connection with the
respective goods and there is no indication that it is other
Serial No. 76376364
8
than a strong mark in connection with registrant’s goods.
While we agree with applicant that we must consider the
marks in their entireties, we must also consider them in
relation to the identified goods. Thus, we find it highly
unlikely that the connotation of applicant’s mark would be
“a series of constellations,” as applicant argues. Rather,
the connotation of CONSTELLATION SERIES is likely to be
substantially similar to the connotation of CONSTELLATION.
CONSTELLATION is likely to be perceived as the dominant term
in applicant’s mark because it is arbitrary in connection
with applicant’s goods, it is the first term in applicant’s
mark, and it is followed by a common descriptive term.
Further, the term SERIES is likely to be perceived as
indicating that the CONSTELLATION SERIES products are part
of the line of CONSTELLATION products. For these reasons,
we also find that the overall commercial impressions of the
two marks are substantially similar. We conclude that the
marks are sufficiently similar in appearance, sound,
connotation and overall commercial impression that, if used
in connection with the same or related goods, confusion as
to the source of the goods is likely.
Turning to consider the goods involved in this case, we
note that the question of likelihood of confusion must be
determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
Serial No. 76376364
9
services recited in the registration, rather than what the
evidence shows the goods or services actually are. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). See also, Octocom Systems,
Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North
American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Further, it is a general rule that goods or services need
not be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is enough
that goods or services are related in some manner or that
the circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used therewith, to a mistaken belief that they originate
from or are in some way associated with the same producer or
that there is an association between the producers of each
parties’ goods or services. In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991), and cases cited therein.
The evidence indicates that applicant’s identified
medical device is a particular non-invasive type of
respiratory device that uses continuous positive airway
pressure (CPAP) delivered by a facial or nasal mask; and
that these medical devices are limited to use for the home
care of patients with sleep apnea. It is also clear that,
Serial No. 76376364
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while patients may use these devices themselves, the device
is set up in the home by a trained medical person who trains
the patient to use it. In the absence of evidence on this
point, we presume that a CPAP device may be purchased both
directly from the manufacturer or home health care retailer
or from a doctor, who may “prescribe” it for the patient.
It is clear from the evidence that there is a category
of catheters used for respiratory therapy. While the
registrant’s goods are not limited to catheters for
respiratory therapy, such catheters are encompassed by the
identification of goods in the registration and would be the
type of catheter most closely related to a CPAP unit because
both are used in connection with respiratory therapy.
However, applicant states that catheters are not used in
connection with sleep apnea nor are catheters used for home
care. Rather, catheters are used on patients only in
hospital or clinic settings; and catheters are inserted by
medical personnel into patients in connection with invasive
procedures. The patients do not purchase these items
(except indirectly as part of the billing for the medical
procedure) and are not aware of the source of these
products.
The Nexis evidence indicates that CPAP units and
catheters, although they are different types of medical
devices, have been used along side each other in at least
Serial No. 76376364
11
one study, and may be used together, apparently for
different purposes, during various types of invasive medical
procedures. The third-party registrations in the record
indicate that at least some marks are registered for a wide
range of medical products that include both CPAP units and
catheters. Finally, we note that the cost of the respective
goods is significantly different.
Therefore, we find that the respective goods are
different products, used for different respiratory purposes
in very different settings (invasive-procedure catheters
used in hospitals versus home care devices); that the users
and purchasers of the prospective products are quite
different (doctors and medical personnel versus the general
public with sleep apnea)3; and the cost of the respective
products is very different.
In conclusion, despite the substantial similarity in
the commercial impressions of applicant’s mark,
CONSTELLATION SERIES, and registrant’s mark, CONSTELLATION,
the Examining Attorney has not established that the goods
are sufficiently related that the contemporaneous use of the
respective marks on the goods involved in this case is

3 We note that there appear to be at least some common purchasers of the
respective goods to the extent that medical personnel, including
doctors, may be involved in the sale of a CPAP unit to a patient with
sleep apnea and medical personnel are involved in the CPAP unit set up
and patient training. However, these are sophisticated purchasers who
are likely to know the source of the respective goods and, therefore,
any confusion as to source among this group of purchasers is likely to
be de minimis.
Serial No. 76376364
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likely to cause confusion as to the source or sponsorship of
such goods.
Decision: The refusal under Section 2(d) of the Act is
reversed.