SYNTHES AG Chur

Trademark Trial and Appeal Board

Nov 21, 2002

No. 78035255 (T.T.A.B. Nov. 21, 2002)

Mailed: November 21,2002
Paper No.9
DH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re SYNTHES AG Chur
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Serial No. 78/035,255
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Stephen A. Hill of Rankin, Hill, Porter & Clark for SYNTHES AG
Chur.
John D. Rodriguez, Trademark Examining Attorney, Law Office 112
(Janice O'Lear, Managing Attorney).
_______
Before Hohein, Walters and Rogers, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
SYNTHES AG Chur has filed an application to register
the mark "AO" for the following goods and services:1
"prerecorded computer discs, videotapes
and CD-ROMS with computer programs for
teaching surgical techniques, sorters for
sorting photographic pictures, X-ray
pictures, slide transparencies and videos
featuring medical information, exposed X-ray
films and slides; computer software for use
in database management and spreadsheets in
the fields of science and technology; blank
magnetic data carriers for computers;
integrated computer software for use in
database management and spreadsheets in the
fields of science, technology and education"
in International Class 9;
1 Ser. No. 78/035,255, filed on November 14, 2000, which is based on an
allegation of a bona fide intention to use the mark in commerce.
Ser. No. 78/035,255
2
"surgical, medical, dental, and
veterinary implants of biodegradable and non-
biodegradable materials, in particular for
osteosynthesis, musculoskeletal surgery,
maxillofacial and spine surgery; artificial
limbs, artificial teeth, bone pins, bone
nails, bone screws and bone plates, angulated
plates, compression plates, hip screws and
hip plates, pedicle screws and pedicle hooks,
intramedullary nails, splints, cerclage
wires, bone clamps and bone staples;
endoprosthesis, in particular endo-joint-
prosthesis, intramedullary plugs; prostheses
and reinforcements for ligaments and tendons;
apparatus and instruments for stereo-tactical
and computer-aided surgery, in particular,
gastroscopes, laryngoscopes, probes and
surgical knives; bone drills, rasps and saws,
distractors, bone forceps, elevators,
retractors, chisels, impactors, internal and
external fixators, pelvic clamps, surgical
drills, drill guides, aiming devices; trays
and cases for instruments and implants of the
aforesaid kind; surgical sutures; artificial
bones and limbs for medical insertion
purposes" in International Class 10;
"printed matter, in particular
newspapers, magazines and books featuring
medical information; teaching material, in
particular workbooks featuring medical
information" in International Class 16;
"copyright management" in International
Class 35;
"publication of books and magazines;
electronic publication services, in
particular publication of text and graphic
works of others on CD-ROMS featuring medical
information; library services, production of
educational video tapes; organizing and
conducting fairs, classes, exhibitions, and
seminars in the field of medicine" in
International Class 41; and
"medical research, organizing and
conducting medical clinical trials, medical
laboratory services, medical services,
providing medical information, leasing
computer facilities, language translations,
and medical photography" in International
Class 42.
Ser. No. 78/035,255
3
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when used in connection with its goods and
services, so resembles the mark "AO" and design, as shown below,
which is registered for "surgery and medical services, namely,
ear, nose and throat as well as plastic and cosmetic surgery" in
International Class 42,2 as to be likely to cause confusion,
mistake or deception.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. Inasmuch as registration must be
refused if use of a mark for any item in an application is likely
to cause confusion with a mark for any item in a prior
registration, see, e.g., Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981), and
because we find a likelihood of confusion solely with respect to
applicant's use of its mark for "medical services" in
International Class 42 and registrant's use of its mark for its
services, we affirm the refusal to register as to International
Class 42, but reverse the refusal to register as to International
Classes 9, 10, 16, 35 and 41.
2 Reg. No. 2,332,480, issued on March 21, 2000, which sets forth a date
of first use anywhere of September 30, 1996 and a date of first use in
commerce of February 5, 1997. The term "P.A." is disclaimed.
Ser. No. 78/035,255
4
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity of the goods
and the similarity of the marks.3
Turning first to consideration of the respective goods
and services, applicant argues that (italics in original):
It is very apparent from a review of the
goods and services of applicant that its
goods and services are intended for
physicians, medical personnel and others in
the medical profession. The services in the
cited registration, on the other hand, are
being offered by physicians, not to
physicians. The services in the cited
registration are being offered to patients.
Medical patients ordinarily would have no
cause to be exposed to a mark applied to, for
example, surgical instruments and supplies,
since such goods would be marketed to the
physicians [and] not to the patients. As
such, the two marks ... are not intended to
be seen by the same class of customers, so
there would be no likelihood of confusion.
However, as the Examining Attorney has pointed out (both in his
brief and in the final refusal), applicant's goods and services
include "medical services" in International Class 42. Such
services plainly encompass, and hence are identical to,
registrant's "medical services, namely ear, nose and throat"
3 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in the marks."
Ser. No. 78/035,255
5
services, and are clearly related to registrant's "surgery"
services with respect to the ear, nose and throat, including
"plastic and cosmetic surgery." The provision of applicant's
"medical services" and registrant's "surgery and medical
services, namely, ear, nose and throat as well as plastic and
cosmetic surgery" services to the general public under the same
or similar marks would consequently be likely to cause confusion
as to source or sponsorship.
With respect to applicant's other goods and services,
the Examining correctly notes that it is well settled that goods
and/or services need not be identical or even competitive in
nature in order to support a finding of likelihood of confusion.
Instead, it is sufficient that the goods and/or services are
related in some manner and/or that the circumstances surrounding
their marketing are such that they would be likely to be
encountered by the same persons under situations that would give
rise, because of the marks employed in connection therewith, to
the mistaken belief that they originate from or are in some way
associated with the same entity or provider. See, e.g., Monsanto
Co. v. Enviro-Chem Corp., 199 USPQ 590, 595-96 (TTAB 1978) and In
re International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978). One way, in particular, of demonstrating such a
close relationship is by making of record copies of use-based
third-party registrations of marks which, in each instance, are
registered for the respective goods and/or services at issue.
While such third-party registrations are admittedly not evidence
Ser. No. 78/035,255
6
that the different marks shown therein are in use or that the
public is familiar with them, they nevertheless have some
probative value to the extent that they serve to suggest that the
goods and/or services listed therein are of the kinds which may
emanate from a single source. See, e.g., In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993) and In re Mucky
Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 (TTAB 1988) at n. 6.
In this case, the Examining Attorney maintains that:
[I]t is well recognized that confusion
is likely to occur from the use of the same
or similar marks for goods, on the one hand,
and for services involving those goods, on
the other. TMEP Section 1207.01(a)(ii). It
is common for parties that perform medical
services to also use the same mark in
relation to medical instruments, goods,
products, equipment devices and software. As
evidenced by third[-]party registrations
taken from the X-Search database and attached
to the Final Office Action dated August 24,
2001, it is common in the medical field for
companies to use the same mark for medical
instruments and devices along with medical
services. As a result, the source of the
goods and services is likely to be confused.
A review of the seven use-based third-party registrations made of
record by the Examining Attorney reveals, however, that while
such registrations, broadly speaking, cover on the one hand a
variety of medical instruments and devices, various computer
programs with application to the medical field, or medical
training services, and list on the other hand certain medical
services, none sets forth or encompasses both one or more of
applicant's particular goods and/or services and registrant's
specific "surgery and medical services, namely, ear, nose and
throat as well as plastic and cosmetic surgery" services.
Ser. No. 78/035,255
7
Thus, and aside from applicant's "medical services,"
there is simply no evidence that any of its diverse goods and
services, which as applicant points out "share the common theme
of medicine and surgery, but are otherwise quite different" on
their face from registrant's particular services, are indeed
sufficiently related to the latter as to be likely, if provided
under the same or similar marks, to cause confusion as to the
origin or affiliation of the goods and services at issue. As
applicant stresses in its brief, there has been no showing by the
Examining Attorney of any common channels of trade and classes of
purchasers for the respective goods and services; instead, it is
apparent that, in essence, applicant "is offering medical
supplies and information to the medical community" while "[t]he
owner of the cited registration is offering medical services to
interested patients."
Turning, therefore, to consideration of whether
applicant's "AO" mark for its "medical services" so resembles
registrant's "AO" and design mark for its identical in part and
otherwise closely related "surgery and medical services, namely,
ear, nose and throat as well as plastic and cosmetic surgery" as
to be likely to cause confusion, applicant argues that:
When considered in their entireties, the
marks are quite different. Applicant's mark
is the simple combination of letters AO. The
mark in the cited registration is for the
entire term AO P.A. and includes a dominating
design feature.
While marks must be considered in their entireties, including any
descriptive or generic matter, our principal reviewing court has
indicated that, in articulating reasons for reaching a conclusion
Ser. No. 78/035,255
8
on the issue of likelihood of confusion, "there is nothing
improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark, provided
[that] the ultimate conclusion rests on consideration of the
marks in their entireties." In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). For instance,
according to the court, "that a particular feature is descriptive
or generic with respect to the involved goods or services is one
commonly accepted rationale for giving less weight to a portion
of a mark ...." Id.
In the present case, when the respective marks are
considered in their entireties, it is plain that they are
substantially the same in appearance, sound, connotation and
commercial impression. In particular, we concur with the
Examining Attorney that the dominant and distinguishing portion
of registrant's "AO" and design mark is the letters "AO," which
are identical in all respects to applicant's "AO" mark. Clearly,
because of their large size and bold stylization, the letters
"AO" form the most prominent portion of registrant's mark,4
especially since, as noted by the Examining Attorney, the much
smaller and disclaimed "letters 'P.A.[,]' like 'Co.,' 'Corp.,'
and 'Inc.,' are merely generic entity designations" which provide
very little in terms of functioning as a source identifier.
Moreover, while registrant's mark contains a design
feature, consisting basically of an outline of a human head with
4 The cited registration, we observe, issued to and is owned by
"Affiliated Otolaryngologists, P. A."
Ser. No. 78/035,255
9
a representation of an ear, nose and throat, such feature is
overshadowed by not only the visual prominence of the letters
"AO" but the descriptiveness inherent in such a feature when used
as part of a mark for surgical and medical services focused on
treatment of the ear, nose and throat. The most prominent
element in registrant's "AO" and design mark, and the element
which would be utilized by patients in asking about and referring
to registrant's services, consequently consists of the letters
"AO," which form the dominant and distinguishing portion of
registrant's mark when considered as a whole.
In addition, it must be kept in mind that because
applicant seeks registration of its "AO" mark in typed form, the
display thereof could include the same stylized manner of
lettering as that utilized by registrant for the letters "AO" in
its "AO" and design mark. See, e.g., Phillips Petroleum Co. v.
C. J. Webb, Inc. 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971) [a
mark registered in typed format is not limited to the depiction
thereof in any special form]; and INB National Bank v. Metrohost
Inc., 22 USPQ2d 1585, 1588 (TTAB 1992) ["[a]s the Phillips
Petroleum case makes clear, when [an] applicant seeks a typed or
block letter registration of its word mark, then the Board must
consider all reasonable manners in which ... [the word] could be
depicted"].
Accordingly, we find that patients and other members of
the general public, who are familiar or acquainted with
registrant's "AO" and design mark for its "surgery and medical
services, namely, ear, nose and throat as well as plastic and
Ser. No. 78/035,255
10
cosmetic surgery" services, would be likely to believe, upon
encountering applicant's substantially identical "AO" mark for
its "medical services" in International Class 42, that such
identical in part and otherwise closely related services emanate
from, or are sponsored by or associated with, the same source.
Decision: In view of our finding of a likelihood of
confusion solely with respect to applicant's "medical services"
in International Class 42, the refusal under Section 2(d) is
affirmed as to International Class 42, but is reversed as to
International Classes 9, 10, 16, 35 and 41.5
5 In consequence thereof, it is pointed out that unless on a possible
appeal applicant ultimately prevails with respect to the finding of a
likelihood of confusion as to its "medical services" in International
Class 42, the application will in due course go forward to publication
of applicant's "AO" mark for the goods and services in International
Classes 9, 10, 16, 35 and 41, but will stand abandoned as to the
services in International Class 42.