Spinal USA

Trademark Trial and Appeal Board

Jun 21, 2013

No. 85386705 (T.T.A.B. Jun. 21, 2013)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: June 21, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Spinal USA
________

Serial No. 85386705
_______

Matthew B. Dernier of Gibson & Dernier LLP for Spinal USA.

Maureen Dall Lott, Trademark Examining Attorney, Law Office
117 (J. Brett Golden, Managing Attorney).
_______

Before Kuhlke, Cataldo and Ritchie,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Spinal USA, filed an application to
register the mark ACCUFIT (standard characters) on the
Principal Register for
medical and surgical apparatus and instruments,
namely, orthopedic fixation devices used in
orthopedic transplant and implant surgery;
surgical instruments for use in spine surgeries;
goods of metal for medical use, namely, screws,
plates, pins and pivots

Ex Parte Appeal No. 85386705

2
in International Class 10.1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with its goods, so
resembles the mark ACCUFIT (standard characters),
previously registered on the Principal Register for
orthopedic footwear; orthopedic soles; orthopedic
supports; orthotic inserts for footwear;
orthotics for foot; supports for ankle, wrist for
medical use

in International Class 10,2 as to be likely to cause
confusion, mistake or deception.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney submitted briefs on
the issue under appeal.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in 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

1 Application Serial No. 85386705 was filed on August 2, 2011,
based upon applicant’s assertion of its bona fide intent to use
the mark in commerce.

2 Registration No. 3481282 issued on August 5, 2008.

Ex Parte Appeal No. 85386705

3
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis two key, though not exclusive,
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 27 (CCPA 1976). See also In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed.
Cir. 1997).
The Marks
Regarding the first factor, the similarity of the
marks, we note there is no dispute but that the marks are
identical. The fact that the marks are identical results
in this factor strongly supporting a finding of likelihood
of confusion. In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1688 (Fed. Cir. 1993) (“Without a doubt the
word portion of the two marks are identical, have the same
connotation, and give the same commercial impression. The
identity of the words, connotation, and commercial
impression weighs heavily against the applicant”).
In consequence thereof, “even when goods or services
are not competitive or intrinsically related, the use of
identical marks can lead to an assumption that there is a
common source.” Id. at 1689. See also Amcor, Inc. v.
Amcor Industries, Inc., 210 USPQ 70, 78 (TTAB 1981) (When
Ex Parte Appeal No. 85386705

4
both parties are using or intend to use the identical
designation, “the relationship between the goods on which
the parties use their marks need not be as great or as
close as in the situation where the marks are not identical
or strikingly similar”).
The Goods
We turn then to our consideration of the identified
goods. In determining the issue of likelihood of confusion
in ex parte cases, the Board must compare applicant’s goods
as set forth in its application with the goods as set forth
in the cited registration. In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). In this case, applicant’s goods are
medical and surgical apparatus and instruments,
namely, orthopedic fixation devices used in
orthopedic transplant and implant surgery;
surgical instruments for use in spine surgeries;
goods of metal for medical use, namely, screws,
plates, pins and pivots

and registrant’s goods are
orthopedic footwear; orthopedic soles; orthopedic
supports; orthotic inserts for footwear;
orthotics for foot; supports for ankle, wrist for
medical use.

We initially observe that the goods do not appear to
be related on the face of their respective identifications
inasmuch as applicant’s goods are medical and surgical
instruments and devices and registrant’s goods are
Ex Parte Appeal No. 85386705

5
orthopedic and orthotic supports and footwear. That is to
say, applicant’s goods are specifically “used in orthopedic
transplant and implant surgery” while those of registrant
comprise orthopedic footwear and related accessories.
Thus, the goods intrinsically differ notwithstanding that
both have orthopedic applications. The examining attorney
argues (brief, unnumbered p. 5) that
the identification set forth in the cited
registration uses broad wording to describe
registrant’s goods. It is, therefore, presumed
that the registration encompasses all goods of
the type described including orthopedic supports
in the nature of devices, instruments and
implants used for orthopedic support including
internal and external orthopedic fixation
devices, screws, plates, pins, and pivots. It
also is presumed that these goods move in all
normal channels of trade and are available to all
potential customers including the consumers to
whom applicant provides its goods.

The examining attorney is correct in her assertion (Id.)
that “unrestricted and broad identifications are presumed
to encompass all goods and/or services of the type
described,” citing In re Jump Designs, 80 USPQ2d 1370, 1374
(TTAB 2006); and In re Linkvest S.A., 24 USPQ2d 1716, 1716
(TTAB 1992). In this case, however, applicant’s goods are
medical and surgical instruments and apparatus. The
examining attorney fails to explain how such specialized
goods as medical and surgical instruments and parts used in
orthopedic implant and transplant surgery may be presumed
Ex Parte Appeal No. 85386705

6
to fall within the general category of registrant’s
“orthopedic supports” as they are included among
registrant’s orthopedic footwear and accessories. Rather,
the examining attorney appears to overreach in the
presumption that applicant’s medical and surgical goods are
of the type described in registrant’s identification of
orthopedic footwear and related goods.
The examining attorney further has made of record
evidence from informational and commercial internet web
sites indicating that applicant’s “orthopedic fixation
devices” are used to provide stabilization and support for
bones.3 However, as discussed above we do not find that
such evidence supports the examining attorney’s contention
that registrant’s broadly recited “orthopedic supports”
include applicant’s “orthopedic fixation devices” used in
surgical applications. Simply put, applicant’s “orthopedic
fixation devices” may provide support for bones as a result
of orthopedic implant or transplant surgery. However, such
use does not make them related to, much less the equivalent
of, “orthopedic supports.”

3 This evidence was made of record with the Examining Attorney’s
April 17, 2012 final Office action and November 7, 2012 denial of
applicant’s request for reconsideration.

Ex Parte Appeal No. 85386705

7
Also, the examining attorney has made of record a
number of third-party registrations, including two use-
based registrations that show different entities have
adopted a single mark for certain goods identified in the
involved application and cited registration.4 Third-party
registrations which individually cover a number of
different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); and In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993). However, we find that two third-party registrations
is far from overwhelming evidence to support a finding that
the goods herein are related.
The nature of the goods as identified and the evidence
of record fails to establish that applicant’s goods are
related to the goods identified in the cited registration,
and further may be identified under the same mark. As
such, this du Pont factor favors a finding of no likelihood
of confusion.
Channels of Trade
In making our determination regarding the relatedness
of the parties’ channels of trade, we look as we must to

4 Registration Nos. 3016365 and 3377892.
Ex Parte Appeal No. 85386705

8
the goods as identified in the involved application and
cited registration. See Octocom Sys. Inc. v. Houston
Computers Svcs. Inc, 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). See also Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
It is presumed that applicant’s medical and surgical goods
and registrant’s orthopedic footwear and related goods move
in all channels of trade normal for such goods, and that
they are purchased by all of the usual consumers for such
goods. In re Elbaum, 211 USPQ at 640, citing Kalart Co.,
Inc. v. Camera-Mart, Inc., 119 USPQ 139 (CCPA 1958).
Here, and as discussed above, neither goods as
identified nor examining attorney’s evidence clearly
suggests that the goods are related or may be offered by
the same entities, to the same customers. Thus, we do not
presume a similarity in trade channels. Further, there is
no evidence that such goods move in common trade channels
or would be purchased by the same customers. As such,
this du Pont factor favors a finding of no likelihood of
confusion.
Sophistication of Purchasers
Neither the application nor the cited registration
includes any limitation on the customers to whom the
respective goods are rendered so we must consider the
Ex Parte Appeal No. 85386705

9
relevant purchasers to include all of the usual customers
for the recited goods. Id. We recognize that applicant’s
medical and surgical goods will be used by medical
professionals hopefully exercising a high degree of care.
Registrant’s orthopedic and orthotic products, on the other
hand, are likely to be purchased by ordinary consumers,
even if on the advice, recommendation or prescription of
healthcare professionals.
Thus it would appear, in considering the fourth du
Pont factor, that at least applicant’s goods may be the
subject of sophisticated purchases. Our primary reviewing
court cautions “[t]hat the relevant class of buyers may
exercise care does not necessarily impose on that class the
responsibility of distinguishing between similar trademarks
for similar goods. ‘Human memories even of discriminating
purchasers ... are not infallible.’” In re Research and
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir.
1986), quoting Carlisle Chemical Works, Inc. v. Hardman &
Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970).
However, in this case, there is insufficient evidence that
applicant’s goods are related to those identified in the
cited registration. See, e.g., Edwards Lifesciences Corp v
Vigilanz Corp., 94 USPQ2d 1399 (TTAB 2010) (no likelihood
of confusion found despite nearly identical marks where
Ex Parte Appeal No. 85386705

10
goods were sold to different medical professionals with
high level of sophistication). As a result, the degree of
care exercised in the purchase of medical and surgical
goods combined with the absence of evidence of a
similiarity to those of registrant result in this du Pont
factor slightly favoring a finding of no likelihood of
confusion.
Third Party Use
Applicant has made of record copies of two third-party
registrations, both for the mark ACCUFIT. These include
Registration No. 3891906 for “dental implants” and
Registration No. 3943984 for “medical and surgical drapes.”
Applicant’s evidence of is entitled to limited probative
value. The registrations are not evidence of use of the
marks shown therein. Thus, they are not proof that
consumers are familiar with such marks so as to be
accustomed to the existence of the same or similar marks in
the marketplace. See Smith Bros. Mfg. Co. v. Stone Mfg.
Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973); and
Richardson-Vicks, Inc. v. Franklin Mint Corp., 216 USPQ 989
(TTAB 1982).
As a result, this du Pont factor is neutral.

Ex Parte Appeal No. 85386705

11
Actual Confusion
Finally, applicant argues (brief, p. 7) that “to date,
no evidence of any actual confusion between these
distinctive products exists in the marketplace.” We do not
accord significant weight to applicant's contention,
unsupported by any evidence, that there have been no
instances of actual confusion. The Federal Circuit has
addressed the question of the weight to be given to an
assertion of no actual confusion by an applicant in an ex
parte proceeding:
With regard to the seventh DuPont factor, we
agree with the Board that Majestic's
uncorroborated statements of no known instances
of actual confusion are of little evidentiary
value. See In re Bissett-Berman Corp., 476 F.2d
640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating
that self-serving testimony of appellant's
corporate president's unawareness of instances of
actual confusion was not conclusive that actual
confusion did not exist or that there was no
likelihood of confusion). A showing of actual
confusion would of course be highly probative, if
not conclusive, of a high likelihood of
confusion. The opposite is not true, however.
The lack of evidence of actual confusion carries
little weight, [citation omitted], especially in
an ex parte context.

Majestic Distilling, 65 USPQ2d at 1205.
Accordingly, while examples of actual confusion may
point toward a finding of a likelihood of confusion, an
absence of such evidence is not as compelling in support of
a finding of no likelihood of confusion.
Ex Parte Appeal No. 85386705

12
As a result, this du Pont factor is also neutral.
Summary
In view primarily of the lack of evidence of a
relationship between applicant’s goods and the goods
identified in the cited registration, we find that the
examining attorney has not met her burden of demonstrating
that a likelihood of confusion exists between applicant’s
goods and those of registrant.
Decision: The refusal of registration is reversed.
Accordingly, the involved application will be forwarded for
publication in due course.