Surgical Specialties Corporation (US), Inc.

Trademark Trial and Appeal Board

Dec 29, 2015

No. 86010502 (T.T.A.B. Dec. 29, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: December 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Surgical Specialties Corporation (US), Inc.
_____

Serial No. 86010502
Serial No. 86010504
Serial No. 86081312
_____

Kevin S. Costanza of Seed Intellectual Property Law Group PLLC
for Surgical Specialties Corporation (US), Inc.

Seth A. Rappaport, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
_____

Before Zervas, Greenbaum, and Masiello, Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:
Surgical Specialties Corporation (US), Inc. (“Applicant”) filed applications to
register on the Principal Register three marks for use in connection with “medical
devices, namely, surgical apparatus and instruments for medical, dental and/or
veterinary use,” in International Class 10. The three marks are set forth below:
SURGICAL SPECIALTIES CORPORATION1

1 Application Serial No. 86010502 was filed on July 15, 2013, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b). No claim is made to the exclusive right to use the
terms SURGICAL and CORPORATION apart from the mark as shown.
Serial No. 86010502, 86010504, 86081312
2

SURGICAL SPECIALTIES2
3
In each case, Applicant subsequently filed an allegation of use and a request that
the mark be registered under Trademark Act Section 2(f), on the ground that the
mark had acquired distinctiveness. Regarding the two standard character marks,
Applicant stated dates of first use and first use in commerce of 1997. Regarding the
stylized mark, Applicant stated dates of first use and first use in commerce of
January 2014.4
In each case, the Trademark Examining Attorney refused registration of
Applicant’s mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1),
on the ground that the mark is merely descriptive of Applicant’s goods. On
consideration of Application’s claim of acquired distinctiveness, the Examining
Attorney maintained the refusal of registration and ultimately made the refusal
final.

2 Application Serial No. 86081312 was filed on October 2, 2013, under Section 1(b) of the
Trademark Act. No claim is made to the exclusive right to use SURGICAL apart from the
mark as shown.
3 Application Serial No. 86010504 was filed on July 15, 2013, under Section 1(b) of the
Trademark Act. No claim is made to the exclusive right to use CORPORATION apart from
the mark as shown. Color is not claimed as a feature of the mark.
4 Applicant’s allegation of use for the stylized mark originally gave 1997 as the date of first
use, but Applicant amended this date to January 2014 by an amendment filed November
17, 2014.
Serial No. 86010502, 86010504, 86081312
3

The Examining Attorney also refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used
in connection with Applicant’s goods, so resembles the registered marks shown
below as to be likely to cause confusion, or to cause mistake, or to deceive. The cited
marks are registered in the name of a single entity for the services as set forth
below:
Reg. No. Mark Services

3869465

AMERICAN SURGICAL
SPECIALTIES COMPANY

Section 2(f)

Disclaimed: SURGICAL
SPECIALTIES COMPANY

Wholesale store services, mail-
order wholesale services, on-line
wholesale services and
wholesale ordering services in
the fields of surgical and medical
devices, instruments and
equipment and laparoscopic
surgical and medical devices,
instruments and equipment.

3988543

AMERICAN SURGICAL
SPECIALTIES COMPANY

Section 2(f)

Disclaimed: SURGICAL
SPECIALTIES COMPANY

Maintenance and repair of
surgical and medical devices,
instruments and equipment.

3988544

AMERICAN SURGICAL
SPECIALTIES COMPANY

Section 2(f)

Disclaimed: SURGICAL
SPECIALTIES COMPANY

Education services, namely,
providing training services in
the field of proper use, storage,
maintenance and repair of
surgical and medical devices,
instruments and equipment
Serial No. 86010502, 86010504, 86081312
4

3980038
Section 2(f) as to AMERICAN
SURGICAL SPECIALTIES
COMPANY

Disclaimed: SURGICAL
SPECIALTIES COMPANY

Wholesale store services, mail-
order wholesale services, on-line
wholesale store services and
wholesale ordering services in
the fields of surgical and medical
devices, instruments and
equipment and laparoscopic
surgical and medical devices,
instruments and equipment.

3988545
Section 2(f)

Disclaimed: SURGICAL
SPECIALTIES COMPANY

Maintenance and repair of
surgical and medical devices,
instruments and equipment

4004998
Section 2(f) as to AMERICAN
SURGICAL SPECIALTIES
COMPANY

Disclaimed: SURGICAL
SPECIALTIES COMPANY

Education services, namely,
providing training services in
the field of proper use, storage,
maintenance and repair of
surgical and medical devices,
instruments and equipment.

Serial No. 86010502, 86010504, 86081312
5

In each case, after the Examining Attorney made his refusals final, Applicant
appealed and filed a request for reconsideration. The Examining Attorney denied
the requests for reconsideration, and Applicant’s appeals proceeded.
The issues raised by Applicant’s three appeals are identical or highly similar. The
briefs and evidentiary record in all cases are essentially identical. Accordingly, we
will address all three appeals in a single opinion. Citations to the briefs and record
refer to the filings in application Serial No. 86010502 unless otherwise noted. We
have, of course, considered all arguments and evidence filed in each case, including
any arguments and evidence not specifically discussed in this decision.
1. Refusals under Section 2(e)(1).
We will first address the refusals under Section 2(e)(1) of the Trademark Act.
Section 2(e)(1) provides for the refusal of registration of “a mark which, (1) when
used on or in connection with the goods of the applicant is merely descriptive or
deceptively misdescriptive of them.” 15 U.S.C. § 1052(e)(1). However, Section 2(f) of
the Trademark Act provides that “nothing … shall prevent the registration of a
mark used by the applicant that has become distinctive of the applicant's goods in
commerce.” 15 U.S.C. § 1052(f). Under Section 2(f), a mark that is otherwise barred
from registration under Section 2(e)(1) can still obtain registration if the applicant
proves that the mark has become distinctive. Cold War Museum Inc. v. Cold War
Air Museum Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1628 (Fed. Cir. 2009), citing
Yamaha Int'l Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001
(Fed. Cir. 1988).
Serial No. 86010502, 86010504, 86081312
6

Inasmuch as applicant is seeking registration under Section 2(f), there is no issue
that its mark is merely descriptive. The Cold War Museum, 92 USPQ2d at 1629
(“where an applicant seeks registration on the basis of Section 2(f), the mark's
descriptiveness is a nonissue; an applicant's reliance on Section 2(f) during
prosecution presumes that the mark is descriptive.”); see also Yamaha, 6 USPQ2d
at 1005. In order to register its mark under Section 2(f), Applicant bears the burden
of proving that its mark has acquired distinctiveness. In re Hollywood Brands, Inc.,
214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954) (“[T]here is no doubt that Congress
intended that the burden of proof [under Section 2(f)] should rest upon the
applicant.”). The amount and character of such evidence depends on the facts of
each case, Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34
(CCPA 1970), and more evidence is required where a mark is so highly descriptive
that purchasers seeing the matter in relation to the goods or services would be less
likely to believe that it indicates source in any one party. “[L]ogically that standard
becomes more difficult as the mark's descriptiveness increases.” Yamaha, 6
USPQ2d at 1008, citing 1 Gilson, TRADEMARK PROTECTION AND PRACTICE, §2.09, at
2-73 (“[i]n general, the greater the degree of descriptiveness the term has, the
heavier the burden to prove it has attained secondary meaning”); and 1 J.
McCarthy, TRADEMARKS AND UNFAIR COMPETITION §15:10, at 683 (“the more
descriptive the term, the greater the evidentiary burden to establish secondary
meaning”). See also In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420 (Fed.
Cir. 2005); and In re Bongrain, 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990).
Serial No. 86010502, 86010504, 86081312
7

In order to fully assess Applicant’s claim under Section 2(f), we will first consider
the degree to which Applicant’s marks are descriptive of Applicant’s goods, which
are “medical devices, namely, surgical apparatus and instruments for medical,
dental and/or veterinary use.” The Examining Attorney has made of record the
following relevant dictionary definitions:
surgical: 1. Of, relating to, or characteristic of surgeons or surgery.
2. Used in surgery.5

specialty:
pl. specialties: 1. A special pursuit, occupation, aptitude, or skill. …
2. A branch of medicine or surgery, such as cardiology or
neurosurgery, in which a physician specializes; the field or
practice of a specialist.6

corporation: 1. A body that is granted a charter recognizing it as a
separate legal entity having its own rights, privileges, and
liabilities distinct from those of its members.7

See also similar definitions from THE AMERICAN HERITAGE DICTIONARY OF THE
ENGLISH LANGUAGE (Fifth ed. 2014) at Office Action of May 18, 2015 at 93-95 and
123. The Examining Attorney has also submitted the following definition:
surgical specialty: A specialty of healthcare in which interventions constitute
a significant component of patient management.8

5 Definition from , Office Action of October 30,
2013 at 105-6.
6 Id. at 107-8.
7 Id. at 109-110.
8 Definition from , Office Action of May 15, 2014
at 94.
Serial No. 86010502, 86010504, 86081312
8

The record also includes copies of web pages on which the expression “surgical
specialties” is used in the context of surgical instruments. We note, in particular,
the following (underscore added):
Surgical Product Information
…
Specialty Instrumentation

Our general instruments are fully complemented by an
extensive selection of instrumentation for all surgical
specialties. Whether for in-office dermatological
procedures or cardiovascular surgery in the OR, Miltex is
able to meet the full range of instrument needs for all
surgical settings …9

***

Teleflex, a global provider of medical devices, offers a full
line of surgical instruments under the Pilling and KMedic
brands. These instruments span across many surgical
specialties, including Cardiovascular, Thoracic,
Ear/Nose/Throat, Orthopedic, Laparoscopy,
Neurosurgery, Gynecology, Plastic, Bariatric, and General
Surgery.10

***

ArthorCare is leveraging these technologies in order to
offer a comprehensive line of surgical devices to capitalize
on a multi-billion dollar market opportunity across
several surgical specialties, including its two core product
areas consisting of Sports Medicine and Ear, Nose, and
Throat as well as other areas such as spine, wound care,
urology and gynecology.11

***

9 Office action of November 14, 2014 at 5.
10 Id. at 7.
11 Id. at 8.
Serial No. 86010502, 86010504, 86081312
9

Searching for specialty surgical instruments doesn’t have
to be hard! … Browse some of the most popular
instruments in a variety of surgical specialties using the
links below!12

We note also a list entitled “Surgical Specialties” listing numerous fields of
medicine;13 a company called Florida Surgical Specialties that distributes “Surgical
Instrumentation and other O.R. related products”;14 and third-party uses of the
expression “specialty surgical instruments” in a descriptive sense.15
It is clear from the evidence that the term “surgical specialties” has been used as
the general name of the various fields of use for which Applicant’s goods are made.
This expression and the mark SURGICAL SPECIALTIES (Serial No. 86081312) are
therefore very highly descriptive of the purpose or use of the identified goods. See In
re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed.
Cir. 2012); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) (A term is
merely descriptive of goods if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function, purpose or use of the goods.)
With respect to the mark SURGICAL SPECIALTIES CORPORATION (Serial No.
86010502), we note the Examining Attorney’s remark that “the applicant is a
corporation that provides surgical apparatuses and instruments for various surgical
specialties …” In the world of commerce, in which a very large share of the entities
doing business are “corporations,” the addition of the business entity designation

12 Id. at 16
13 Id. at 9-10.
14 Id. at 13.
15 Id. at 16, 19.
Serial No. 86010502, 86010504, 86081312
10

CORPORATION does nothing to increase the distinctiveness of Applicant’s mark. In
re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1374 (Fed. Cir. 2004)
(wording that creates the impression of a commercial entity “bears no trademark
significance”), discussing Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear
Rubber Co., 128 U.S. 598, 602 (1888). We do not, of course, ignore the word
CORPORATION in our assessment of the mark, and we note that, unlike
SURGICAL SPECIALTIES, which describes the use and purpose of the goods,
SURGICAL SPECIALTIES CORPORATION describes a business entity that is
involved in the field in which Applicant’s goods are used. The latter mark has
slightly more potential for distinctiveness as a source indicator than the former; but
the increase in potential is very slight.
Finally, with respect to Applicant’s stylized mark (Serial No. 86010504), we note
that the wording of the mark has essentially the same potential for distinctiveness
as the mark SURGICAL SPECIALTIES CORPORATION, but the stylized form of
the lettering and the layout of the mark bring added potential for trademark
function. However, the style of lettering is not distinctive, except for two of the
letters, namely, the letter I as it appears in SURGICAL and as it first appears in
SPECIALTIES. The stylized form of these two letters is relatively subtle and would
not necessarily be noticed by customers. The layout of the mark (the three words
stacked vertically, with CORPORATION rendered in smaller lettering) is also
highly conventional and is a layout in which customers would readily expect other
companies to present the words SURGICAL SPECIALTIES CORPORATION.
Serial No. 86010502, 86010504, 86081312
11

Overall, this stylized mark is the one with the strongest potential for acquiring
distinctiveness as a trademark.
We turn next to consider the evidence presented by Applicant to show that its
marks have acquired distinctiveness as its source indicators. In each case, the
evidence consists of three components: Applicant’s stated dates of first use; and two
statements of Applicant’s counsel, all as discussed below.
(a) Dates of first use.
With respect to Applicant’s two standard character marks, Applicant
stated its dates of first use on the electronic form of its amendment to
allege use,16 as follows:
FIRST USE ANYWHERE DATE 00/00/1997
FIRST USE IN COMMERCE DATE 00/00/1997
With respect to Applicant’s stylized mark, Applicant originally stated
its dates of first use as “00/00/1997,”17 but then amended them to “At
least as early as 01/00/2014.”18
In all three cases, the amendment to allege use was verified with a
declaration signed by Applicant’s counsel.
(b) Statements of counsel.
In each case, the record contains the following unverified statements
made by Applicant’s counsel:

16 Amendment to Allege Use filed October 30, 2014 at 1.
17 Application Serial No. 86010504, Amendment to Allege Use filed October 30, 2014 at 1.
18 Application Serial No. 86010504, Voluntary Amendment filed November 17, 2014 at 1.
Serial No. 86010502, 86010504, 86081312
12

As indicated [in Applicant’s amendment to allege use], the
applicant has been using SURGICAL SPECIALTIES
CORPORATION as a mark in connection with the
marketing and sale of medical devices since at least as
early as 1997. During that seventeen (17) year time
period, consumers have grown to recognize SURGICAL
SPECIALTIES CORPORATION as an indicator of the
source of origin of the associated medical devices.
Accordingly, the mark has acquired distinctiveness or
secondary meaning, and is registrable on the Principal
Register under Section 2(f).19
The mark has become distinctive of the goods/services
through the applicant’s substantially exclusive and
continuous use in commerce that the U.S. Congress may
lawfully regulate for at least the five years immediately
before this statement.20
Applicant argues in its brief, “The Trademark rules provide that five years of
continuous and substantially exclusive evidence [sic] can be prima facie evidence of
acquired distinctiveness. 37 C.F.R. § 2.41(b). In this case, Applicant has used the
mark for well over five years – in fact, for nearly two decades. As such, this factor
weighs heavily in favor of a finding of acquired distinctiveness.”21 The Examining
Attorney argues:
[A] claim of acquired distinctiveness based solely on the
number of years the mark has been used in commerce by
the applicant is insufficient in this case because the
evidence provided by the examining attorney shows that
the applicant did not have exclusive use of the applied-for
mark in connection with the identified goods.22
[T]he number of the years that the applicant has used a
particular mark is only part of the analysis with respect

19 Request for reconsideration filed November 6, 2014 at 1.
20 Id. at 2.
21 Applicant’s brief at 13, 7 TTABVUE 18.
22 Examining Attorney’s brief , 9 TTABVUE 22.
Serial No. 86010502, 86010504, 86081312
13

to a claim of acquired distinctiveness. … More evidence is
required where a mark is so highly descriptive that
purchasers seeing the matter in relation to the named
goods would be less likely to believe that it indicates
source in any one party.23
On the point of exclusivity of use, Applicant points out that “while the Examining
Attorney identified third-party use of ‘surgical,’ ‘specialties’ and ‘surgical
specialties,’ there is no evidence in the record that another party is using the
trademark ‘Surgical Specialties Corporation.’”24
Applicant has submitted the bare minimum of evidence for the purpose of
demonstrating that its marks have come to be recognized as its source indicators: a
verified statement that Applicant has used its marks since 1997 (or, in the case of
the stylized mark, since 2014) and an unverified statement25 that it has used the
marks substantially exclusively and continuously for five years. The evidence lacks
any other meaningful detail. There is no evidence to show that the mark has been
used vigorously, as opposed to desultorily; no evidence to show that it has ever been
advertised; no evidence to indicate the geographic range of the distribution of
Applicant’s goods or the number of goods that have been sold under the mark; and
no evidence to show that any customer has ever noticed the mark or received any
particular impression of it. The conclusory statement that the mark has acquired
distinctiveness comes from Applicant’s outside counsel, with no explanation of why

23 Id., 9 TTABVUE 24.
24 Applicant’s brief at 13, 7 TTABVUE 18.
25 Trademark Rule 2.41(a)(2) prescribes that an acceptable claim of distinctiveness based on
five years of use may be made “by way of verified statements …,” noting that “further
evidence may be required.” 37 C.F.R. § 2.41(a)(2) (emphasis added). The fact that
Applicant’s distinctiveness claims are not verified reduces their probative weight.
Serial No. 86010502, 86010504, 86081312
14

outside counsel would be familiar with the operations of Applicant’s business or
knowledgeable with respect to customer perceptions in Applicant’s marketplace.
Evidence of this type carries little probative weight.
The principle that proof of five years of substantially exclusive and continuous use
of a mark may suffice as prima facie evidence of acquired distinctiveness, to which
Applicant alludes, is set forth in Section 2(f) of the Trademark Act itself (“The
Director may accept as prima facie evidence that the mark has become distinctive
… proof of substantially exclusive and continuous use thereof as a mark by the
applicant in commerce for the five years before the date on which the claim of
distinctiveness is made.”). The Federal Circuit, noting this statutory “suggestion,”
has observed that “the ‘exact kind and amount of evidence necessarily depends on
the circumstances of the particular case’, and ‘Congress has chosen to leave the
exact degree of proof necessary to qualify a mark for registration to the judgment of
the Patent Office and the courts.’” Yamaha, 6 USPQ2d 1008, quoting In re Owens-
Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417, 422 (Fed. Cir. 1985).
Under the present circumstances, where we have found each of Applicant’s three
marks to be quite highly descriptive (albeit in varying degrees), we find Applicant’s
evidence insufficient to demonstrate that any of its marks have acquired
distinctiveness. The small amount of Applicant’s evidence regarding substantially
exclusive use of its marks is undermined by evidence of record showing that third
parties have used the wording “surgical specialties” (which constitutes the most
prominent component of Applicant’s marks) in a highly descriptive manner in the
Serial No. 86010502, 86010504, 86081312
15

relevant industry. With respect to the stylized mark, the claim of five years’ use is
undermined by the inconsistent statement that the mark was adopted only in 2014.
Inasmuch as we find that Applicant has failed to demonstrate that its marks have
acquired distinctiveness under Section 2(f), we affirm the Examining Attorney’s
refusals under Section 2(e)(1).
2. The refusals under Section 2(d).
We next address the Examining Attorney’s refusals under Section 2(d), which
are based on the above-listed six cited registrations owned by a single entity. In
comparing Applicant’s marks to the cited marks, we will focus our analysis on
Registrant’s standard character mark AMERICAN SURGICAL SPECIALTIES
COMPANY, as registered for wholesale sales services (Reg. No. 3869465) and
maintenance and repair services (Reg. No. 3988543). Registrant’s standard
character marks are more similar to Applicant’s marks than are Registrant’s design
marks; and Registrant’s sales, repair and maintenance services are more similar to
Applicant’s goods than are Registrant’s training services. Thus, these two
registrations are most likely to support a finding of likelihood of confusion. If
confusion is likely as between either of these registered marks and Applicant’s
marks, there is no need for us to consider the other cited registrations; and if there
is no likelihood of confusion between Applicant's marks and either of these two cited
marks, then there would be no likelihood of confusion with respect to the other cited
marks. See, e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB
2010).
Serial No. 86010502, 86010504, 86081312
16

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 issue of
likelihood of confusion as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case Applicant and the
Examining Attorney have also submitted arguments relating to trade channels, the
strength or weakness of Registrant’s marks, the sophistication of relevant
customers, the care with which they select the goods and services, and the absence
of actual confusion.
A. The marks.
We first consider the similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison
of the marks, but instead ‘whether the marks are sufficiently similar in terms of
their commercial impression’ such that persons who encounter the marks would be
likely to assume a connection between the parties.” Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation
omitted). For the sake of convenience, we set forth the marks at issue below,
although we do not assume that the marks would necessarily be seen together in
the marketplace:
Serial No. 86010502, 86010504, 86081312
17

Registrant’s mark:

AMERICAN SURGICAL SPECIALTIES COMPANY

Applicant’s marks:

SURGICAL SPECIALTIES CORPORATION
SURGICAL SPECIALTIES

While we must consider the marks in their entireties and be careful to avoid
“dissection” of the marks, both Applicant and the Examining Attorney appear to
acknowledge that there is nothing improper in giving more or less weight to a
particular feature of a mark, for rational reasons. In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). “Indeed, this type of analysis
appears to be unavoidable.” Id.
In appearance and sound, the marks are similar in that each includes the term
SURGICAL SPECIALTIES. However, the marks have certain distinguishing
features: AMERICAN and COMPANY in Registrant’s mark create a distinction in
sound and appearance; the word CORPORATION in Applicant’s mark creates a
difference in sound and appearance and the design elements of Applicant’s stylized
mark create a difference in appearance. In meaning, the marks are similar to the
extent that the wording SURGICAL SPECIALTIES would, of course, mean the
same thing in all the marks; moreover, we note that SURGICAL SPECIALTIES
COMPANY and SURGICAL SPECIALTIES CORPORATION are, despite their
Serial No. 86010502, 86010504, 86081312
18

differences, virtually identical in meaning. The word AMERICAN in Registrant’s
mark creates a distinction in meaning between Registrant’s marks and Applicant’s
marks. However, the distinctiveness of AMERICAN is not particularly strong, in
view of its geographically descriptive nature, as used in the United States market.
Applicant urges that the dominant feature of Registrant’s marks is AMERICAN
SURGICAL, while the dominant portion of its own marks is SURGICAL
SPECIALTIES. Although the design marks of Registrant do indeed emphasize the
words AMERICAN SURGICAL, Registrant’s standard character marks (on which
we focus) are not limited to any particular form of display. Squirtco v. Tomy Corp.,
697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983), and could be presented, for
example, with all wording in the same style and size of lettering. Considering the
evidence, discussed above, showing that the expression “surgical specialties” is a
recognized, unitary phrase, it is unlikely that customers in the marketplace would
fail to connect the two words “surgical” and “specialties.” Accordingly, we consider
the dominant portion of Registrant’s mark to be AMERICAN SURGICAL
SPECIALTIES and the dominant portion of Applicant’s marks to be SURGICAL
SPECIALTIES (which is also the entirety of one of Applicant’s marks).
Applicant correctly points out that Registrant has disclaimed the exclusive right
to use SURGICAL SPECIALTIES COMPANY apart from the mark as a whole.
Indeed, on this record there is no question that the wording SURGICAL
SPECIALTIES COMPANY is highly descriptive. Applicant argues:
Where a party chooses a trademark which is inherently
weak, the party will not enjoy the wide latitude of
Serial No. 86010502, 86010504, 86081312
19

protection afforded the owners of strong trademarks. In
other words, where a party uses a weak mark,
competitors may come closer to the mark than would be
the case with a strong mark without violation of the
rights of the party choosing the inherently weak mark. …
Trademarks containing commonly used words and highly
suggestive or descriptive words are generally considered
as weak marks that are afforded less protection than that
accorded an arbitrary or coined word. … Therefore
Applicant submits that the registrant is entitled only to a
very narrow scope of protection and that the differences in
the marks in their entireties and, more particularly, the
dominant portions thereof, AMERICAN SURGICAL and
SURGICAL SPECIALTIES, are sufficient to preclude the
likelihood of consumer confusion.26
The Examining Attorney, in response, points out that “marks deemed ‘weak’ or
merely descriptive are still entitled to protection against the registration by a
subsequent user of a similar mark for closely related goods and/or services,”27 citing
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109
(CCPA 1974) (“Confusion is confusion. The likelihood thereof is to be avoided, as
much between ‘weak’ marks as between ‘strong’ marks, or as between a ‘weak’ and a
‘strong’ mark.”) and In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982)
(“even weak marks are entitled to protection against registration of similar marks,
especially identical ones, for related goods and services”).
As noted, SURGICAL SPECIALTIES, SURGICAL SPECIALTIES COMPANY
and SURGICAL SPECIALTIES CORPORATION are highly descriptive in the
relevant industry. However, the record would not support a finding that these terms
are devoid of the capacity to function as a mark: SURGICAL SPECIALTIES is not

26 Applicant’s brief at 8-10, 7 TTABVUE 13-15.
27 Examining Attorney’s brief, 9 TTABVUE 9.
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the generic name of Registrant’s services, nor is SURGICAL SPECIALTIES
COMPANY the generic name of Registrant’s business entity. It is also clear that the
marks of Applicant and Registrant have many points of similarity and are, in their
entireties, strikingly similar, albeit not identical. Finally, we operate on the legal
assumption, dictated by Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b), that
Registrant’s mark as a whole, AMERICAN SURGICAL SPECIALTIES COMPANY,
is a valid service mark. We find that the marks at issue are sufficiently similar to
each other as to be likely to cause confusion if applied to identical or closely related
goods or services. Bearing that in mind, we turn to consider the other du Pont
factors.
B. The goods and services; trade channels.
We next consider the similarity or dissimilarity of the goods and services as
identified in the application and the cited registrations. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-1162
(Fed. Cir. 2014); Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Because Applicant’s goods and Registrants’
services are not the same, we ask whether the goods and services are related in
some manner or whether the circumstances surrounding their marketing are such
that they could give rise to the mistaken belief that they emanate from the same
source. Coach Services Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722; In re
Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009).
Applicant argues:
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Although the claimed goods and services may be from the
medical field, the differences in medical devices and
wholesale, educational, and repair and maintenance
services are sufficiently distinct and target different
consumers …
[W]here there are differences in the Applicant’s recited
goods and registrant’s recited services, as in the present
case, it follows that consumer confusion would be less
probable than in those cases involving identical goods.28
The Examining Attorney has submitted various third-party registrations that
cover, on the one hand, surgical instruments and, on the other hand, wholesale
store services or repair and maintenance relating to medical equipment.29 Third-
party registrations that are based on use in commerce and which individually cover
a number of different goods and services may have some probative value to the
extent that they serve to suggest that the listed goods and services are of types
which may emanate from the same source. In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988). Only a few of these registrations appear to
have direct relevance to this case:
Reg. No. Mark

Goods/Services
2967399 E-CLASS Instruments for endoscopic surgery.

Repair and maintenance of medical
instruments for endoscopic surgery.

28 Applicant’s brief at 10-11, 7 TTABVUE 15-16.
29 Office Action of October 30, 2013 at 38-104 and Office Action of May 15, 2014 at 11-67.
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4210185 ALLEGRETTO WAVE Diagnostic instruments used in ophthalmic
surgical procedures.

Repair and maintenance of devices and
equipment for medical purposes.

4109583 MYBUY Surgical forceps; medical scissors.

Wholesale store featuring various medical
apparatus and instruments.

The Examining Attorney has also made of record advertisements, found on the
Internet, offered to demonstrate that a single business may offer surgical
instruments and sales of surgical instruments under the same mark. Among these
we note only the following as directly relevant to this case:
Medtronic For Healthcare Professionals, offering
“Electrosurgical Products” and repair services; as well as
product training.30
The Examining Attorney argues that “consumers are likely to be confused by the
use of similar marks on or in connection with goods and with services featuring or
related to those goods,” citing In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6
USPQ2d 1025 (Fed. Cir. 1988). In that case, the Court found the distinction
between a registrant’s goods and an applicant’s service of selling such goods to be
“of little or no legal significance” for purposes of a du Pont analysis:
Considering the facts (a) that trademarks for goods find
their principal use in connection with selling the goods
and (b) that the applicant's services are general
merchandising -- that is to say selling -- services, we find
this aspect of the case to be of little or no legal

30 Office Action of May 15, 2014 at 80-85.
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significance. The respective marks will have their only
impact on the purchasing public in the same marketplace.
In our case the goods and services at issue, as recited in the applications and
registrations, are more closely related than in Hyper Shoppes. Applicant’s goods are
surgical instruments and Registrant’s services are selling surgical instruments.
Thus, Registrant’s service is, by its terms, to provide a trade channel for the precise
goods for which Applicant wishes to register its mark. Accordingly, we find that
there is a cognizable degree of commercial relationship between them.
C. Care and sophistication of customers.
Applicant argues that customers for the goods and services at issue are
sophisticated and careful in the selection thereof:
Applicant’s claimed goods are highly technical medical
devices that are purchased by sophisticated consumers,
while registrant’s recited services are also related to
sophisticated purchasers of medical equipment services.
Therefore, the relevant purchasers are expected to
exercise precautions when making purchasing decisions.31
Applicant’s argument is not supported by evidence and we therefore have no actual
information about who the purchasers are or what the process of selecting the goods
and services is like. However, we can assume that the relevant customers are not
ordinary consumers, but persons having some knowledge in the field of medical
instruments.

31 Applicant’s brief at 12, 7 TTABVUE 17.
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D. Lack of confusion.
Applicant points out the “absence of any instances of actual confusion for a
lengthy duration over which the marks have coexisted in the marketplace …”32
Applicant’s contention that there has been no confusion is not supported by any
evidence relating to the extent of use of Applicant’s and Registrant’s marks.
Accordingly, we have no basis for determining whether there have been meaningful
opportunities for confusion to have occurred in the marketplace. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); and Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). Moreover, in this
ex parte proceeding, we do not have the benefit of Registrant’s input as to whether
confusion has occurred. Lacking such an evidentiary context, Applicant’s
uncorroborated statements of no known instances of actual confusion are of little
evidentiary value. See In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1205 (Fed. Cir. 2003); In re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ
528, 529 (CCPA 1973).
E. Balancing the factors.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. Despite the
weakness of the common elements appearing in Applicant’s marks and the cited
registered marks, i.e., SURGICAL SPECIALTIES, the marks at issue are strikingly
similar to each in appearance, sound, meaning, and overall commercial impression.

32 Id. at 13, 7 TTABVUE 18.
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The words COMPANY and CORPORATION contribute no distinctiveness to the
respective marks; and the word AMERICAN in Registrant’s mark contributes only
a limited degree of distinctiveness. Moreover, Applicant’s standard character marks
contain no distinctive matter to distinguish them from Registrant’s marks, and the
stylization of the lettering in Applicant’s stylized mark is so subtle as to be
overlooked. Applicant’s goods are the types of goods offered through Registrant’s
services. Even assuming that the relevant customers exercise some degree of care,
under the circumstances we find that confusion as to the sources of the goods and
services is likely. Accordingly, we affirm the Examining Attorney’s refusals under
Section 2(d).
Decision: With respect to the three applications on appeal, the refusals under
Trademark Act Section 2(e)(1) are AFFIRMED and the refusals under Trademark
Act Section 2(d) are AFFIRMED.
ZERVAS, dissenting in part:
I agree with the majority’s conclusion regarding the Section 2(e)(1) refusal, but I
respectfully dissent from its conclusion regarding the Section 2(d) refusal.
Registrant’s mark includes the term AMERICAN as its first term, which is
conspicuously absent from Applicant’s marks. SURGICAL SPECIALTIES, a term
which has been disclaimed six times by registrant, and which the majority found to
be “highly descriptive in the relevant industry,” cannot be the basis for finding the
involved marks to be similar for goods on one hand, and for services on the other
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hand, even if the services involve the same goods. In light of such differences in the
marks and goods, I would find no likelihood of confusion between the Applicant’s
mark and the marks of the cited registrations, and would reverse the Examining
Attorney’s Section 2(d) refusal for each cited mark.