Spinal USA

Trademark Trial and Appeal Board

Jun 17, 2013

No. 85386671 (T.T.A.B. Jun. 17, 2013)

Mailed: 6/17/2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Spinal USA
________

Serial No. 85386671
_______

Matthew B. Dernier of Gibson & Denier for Spinal USA.1

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

Before Quinn, Zervas and Adlin,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Spinal USA filed, on August 2, 2011, an intent-to-use
application under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b), to register the mark RELI (in standard characters)
for goods ultimately identified as “synthetic materials for the
production of bone grafts, namely, chemical adhesives for use in
the manufacture of bone grafts” in International Class 1; and

1 The prosecution of this application (including the appeal brief) was
handled by Adam J. Cermak of Cermak Nakajima. Shortly after the
appeal brief was filed, applicant filed a revocation of attorney, and
appointed Mr. Dernier as new counsel.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 85386671

2

“synthetic bone grafts for use as an implant” in International
Class 10.
The trademark examining attorney refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that applicant’s mark, when applied to applicant’s goods
in International Class 10, so resembles the previously
registered, identical mark RELI for “needles for medical use” in
International Class 10,2 as to be likely to cause confusion. So
as to be clear, the final refusal applies to International Class
10 only.3
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant principally argues that the goods are
significantly different, and that the purchasers of such goods,
for example surgeons and hospitals, are highly sophisticated and
not likely to be confused as to the source of the goods. In
support of its arguments, applicant submitted excerpts of its
website, as well as of registrant’s website, and a copy of
registrant’s specimen of record.
The examining attorney maintains that the goods are
sufficiently related that confusion is likely, especially
because they are offered under identical marks. The examining

2 Registration No. 3921083, issued February 15, 2011.
3 The examining attorney withdrew the refusal in International Class 1
in her Office action dated April 16, 2012.
Ser. No. 85386671

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attorney also asserts that the goods move through the same or
similar trade channels. In support of the refusal, most
particularly with respect to the position that the goods and
trade channels are similar, the examining attorney submitted
third-party registrations, and excerpts of third-party websites.
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 (CCPA
1973). In any likelihood of confusion analysis, however, two
key 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 (CCPA 1976).
In comparing the marks, we must consider them in their
entireties as to appearance, sound, connotation and commercial
impression to determine the similarity or dissimilarity between
them. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
In the present case, the marks are identical in sound,
appearance, meaning, and overall commercial impression, and
applicant does not argue to the contrary. The identity between
the marks is a du Pont factor that weighs heavily in favor of a
finding of likelihood of confusion.
Ser. No. 85386671

4

We next turn to the second du Pont factor to compare the
goods, namely applicant’s “synthetic bone grafts for use as an
implant” and registrant’s “needles for medical use.” We make
our determination regarding the similarities between the goods,
channels of trade and classes of purchasers based on the goods
as they are identified in the application and registration,
respectively. Octocom Systems Inc. v. Houston Computers
Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990); and In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB
2011). Where the goods in a cited registration are broadly
identified as to their nature and type, as is the case herein,
it is presumed that in scope the recitation of goods encompasses
all the goods of the nature and type described therein. Paula
Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d
956, 119 USPQ 139 (CCPA 1958); and In re Elbaum, 211 USPQ 639
(TTAB 1981). In view thereof, registrant’s “needles for medical
use” are presumed to encompass all such needles, including those
which the record shows are used in bone graft and implant
procedures.
In considering this du Pont factor, we especially note that
where identical marks are involved, as is the case here, the
degree of similarity between the goods that is required to
support a finding of likelihood of confusion declines. In re
Ser. No. 85386671

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Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-89 (Fed. Cir.
1993) (“even when the goods or services are not competitive or
intrinsically related, the use of identical marks can lead to
the assumption that there is a common source”); Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002); and In
re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001). It is only
necessary that there be a viable relationship between the goods
to support a finding of likelihood of confusion. In re
Concordia International Forwarding Corp., 222 USPQ 355, 356
(TTAB 1983). The issue here, of course, is not whether
purchasers would confuse the goods, but rather whether there is
a likelihood of confusion as to the source of these goods. In
re Rexel Inc., 223 USPQ 830 (TTAB 1984).
Although the goods are specifically different, the
examining attorney submitted substantial evidence to establish
that the goods are related for purposes of the likelihood of
confusion analysis. More specifically, the record establishes
that needles are used in bone grafting procedures.
Minimally invasive bone grafting refers to
new techniques of bone grafting in which the
grafting procedure can be done using
injection through a needle, avoiding the
need for surgical incision.
(spineuniverse.com)

Grafting can be performed with a needle
without a surgical incision.
(clevelandclinic.org)

Ser. No. 85386671

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Injectable bone graft substitute in tibial
metaphyseal fractures.
(wmt.com)

Injectable calcium phosphate cement:
Effects of powder-to-liquid ratio and needle
size.
(nih.gov)

Once the needle is in position, a cement is
injected into the bone to secure it.
(familydoctor.org)

Vertebroplasty uses three-dimensional
imaging to help a doctor guide a fine needle
into the vertebral body. A glue-like epoxy
is injected, which quickly happens to
stabilize and strengthen the bone and
provides immediate pain relief.
(netwellness.org)

(see attachments to Office action dated Apr. 16, 2012).
The examining attorney also introduced several use-based
third-party registrations showing that the same entity has
registered the same mark for the types of goods involved in this
appeal. (see attachments to Office actions dated Sept. 26, 2011
and Apr. 16, 2012). Examples of these registrations include the
following: Reg. No. 3717468 of ORTHOVITA and design for
“surgical tissue for implantation” and “surgical instruments for
use in procedures restoring, repairing, or treating organ
tissues, namely instrumentation in the nature of spray and
syringe-type applicators and needles”; Reg. No. 3843555 of a
mountain design for “chemical preparations used in connection
with bone implants and implantation” and “injection needles”;
Ser. No. 85386671

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Reg. No. 3269679 of AVAULTA for “medical needles” and
“artificial surgical implants”; Reg. No. 3697150 of RE-INVENTING
HEALTH for “injection needles,” “needles for medical use” and
“surgical implants comprising artificial material;” and Reg. No.
3677966 of AXIALIF 2L for “hypodermic needles” and “synthetic
and prosthetic media for use in the augmentation of bone and
tissue.” “Third-party registrations which cover a number of
differing goods and/or services, and which are based on use in
commerce, although not evidence that the marks shown therein are
in use on a commercial scale or that the public is familiar with
them, may nevertheless have some probative value to the extent
that they may serve to suggest that such goods or services are
of a type which may emanate from a single source.” In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d,
864 F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
The record further includes numerous excerpts of third-
party websites showing that the same entities commonly offer
both types of goods involved in this appeal. (see attachments
to Office actions dated Apr. 16, 2012 and Nov. 7, 2012).
Excerpts from the websites of Sybron Implant Solutions, Surgical
Solutions USA, Biomimetic, and ACE Surgical Supply, Inc. show
that each of these entities provides a variety of medical
supplies, including bone graft implant products and needles.
Ser. No. 85386671

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This evidence shows that the goods move through the same or
similar trade channels (e.g., online medical supply
distributors), and further supports a finding that consumers are
likely to believe that applicant’s and registrant’s goods
emanate from the same source and are directed to the same
classes or purchasers.
Based on the evidence of record, we find that the factors
of the similarity between the goods, and the overlap in trade
channels and classes of purchasers weigh in favor of a finding
of likelihood of confusion.
As to purchasers, both types of goods would be purchased by
medical professionals, such as surgeons and purchasing agents of
hospitals. Applicant argues that these purchasers are
sophisticated. Given the nature of the goods at issue, even in
the absence of any evidence on the point, it is reasonable for
us to assume that the relevant purchasers comprise medical
professionals, including surgeons and hospital purchasing
agents, who are likely to exercise care when it comes to buying
these types of medical products. Even assuming that a careful
selection is involved, it is settled that even sophisticated
purchasers are not immune from source confusion, especially in
cases such as the instant one involving identical marks and
related goods. See In re Research Trading Corp., 793 F.2d 1276,
230 USPQ 49, 50 (Fed. Cir. 1986), citing Carlisle Chemical
Ser. No. 85386671

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Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ
110, 112 (CCPA 1970) (“Human memories even of discriminating
purchasers...are not infallible.”). See also In re Decombe, 9
USPQ2d 1812 (TTAB 1988). We find that the identity between the
marks and the relatedness of the goods sold thereunder outweigh
any presumed sophisticated purchasing decision. See HRL
Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB
1989), aff’d, Weiss Associates, Inc. v. HRL Associates, Inc.,
902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of
goods and marks outweigh sophisticated purchasers, careful
purchasing decision, and expensive goods).
In urging reversal of the refusal, applicant relies on
extrinsic evidence regarding registrant’s specific goods and
function, that is, registrant’s actual goods are suture packages
that include suture needles. Applicant asserts that
registrant’s needles are not for use in connection with bone
grafts and implants. This argument must fail because an
applicant may not restrict the scope of goods in an otherwise
unrestricted registration by extrinsic evidence (in this case,
registrant’s website and specimen). See In re Bercut-
Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986). See also,
e.g., Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB
1998) (availability of Section 18 restriction of identification
Ser. No. 85386671

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of goods in registration so as to avoid likelihood of
confusion).
Further, to the extent that applicant’s argument based on
an alleged overbroad identification of goods in the cited
registration constitutes a collateral attack on the
registration, we agree with the examining attorney’s assessment
that such attack is impermissible. Section 7(b) of the
Trademark Act, 15 U.S.C. § 1057(b), 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
and/or services 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. In re Dixie Restaurants, Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); and In re Peebles
Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992). See TMEP
§ 1207.01(d)(iv) (2013). Accordingly, no consideration has been
given to applicant’s arguments in this regard.
Applicant states that there is no evidence of any actual
confusion. Applicant’s assertion, in this ex parte proceeding,
is entitled to little weight. See In re Majestic Distilling
Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003)
Ser. No. 85386671

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(“uncorroborated statements of no known instances of actual
confusion are of little evidentiary value”). See also In re
Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973)
(stating that self-serving testimony of applicant’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); In re Binion, 93 USPQ2d 1531, 1536
(TTAB 2009); In re 1st USA Realty Professionals Inc., 84 USPQ2d
1581, 1588 (TTAB 2007); and In re Kangaroos U.S.A., 223 USPQ
1025, 1026-27 (TTAB 1984). In any event, applicant’s
application is based on an intent to use the mark, and the
record is devoid of probative evidence relating to the extent of
use of applicant’s (if any) and registrant’s marks and, thus,
whether there have been meaningful opportunities for instances
of actual confusion to have occurred in the marketplace. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1847 (Fed. Cir. 2000). Accordingly, the du Pont factor of the
length of time during and conditions under which there has been
contemporaneous use of the marks without evidence of actual
confusion is considered neutral.
We have carefully considered all of the evidence made of
record pertaining to the issue of likelihood of confusion, as
well as all of the arguments related thereto, including any
evidence and arguments not specifically discussed in this
Ser. No. 85386671

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opinion. We conclude that purchasers, even sophisticated ones,
familiar with registrant’s “needles for medical use” sold under
the mark RELI would be likely to mistakenly believe, upon
encountering applicant’s identical mark RELI for “synthetic bone
grafts for use as an implant,” that the goods originated from or
are associated with or sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register in International Class
10 is affirmed. The application will proceed in International
Class 1 only.