Synthon Holding B.V.

Trademark Trial and Appeal Board

Feb 14, 2019

EX (T.T.A.B. Feb. 14, 2019)

This Opinion is Not a
Precedent of the TTAB

Oral Hearing: November 13, 2018 Mailed: February 14, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Synthon Holding B.V.
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Serial No. 87464096
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E. Anthony Figg, Leo M. Loughlin, and Davide F. Schiavetti
of Rothwell, Figg, Ernst & Manbeck P.C.
for Synthon Holding B.V.

Lourdes Ayala, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
_____
Before Mermelstein, Lynch, and Larkin,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:
I. Background
Synthon Holding B.V. (“Applicant”) seeks registration on the Principal Register of
the mark SYNTHON in standard characters for the following goods and services:
Pharmaceutical preparations, substances and
compositions for the treatment of cancer, multiple sclerosis
and disorders of the central nervous system, neoplasms
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and autoimmune diseases and those intended for the
treatment of kidney and genitourinary disorders,
cardiovascular disorders, metabolic and gastric disorders,
blood disorders, bone disorders, hormonal disorders,
treatment of pain, fungal and bacterial diseases and
preparations used in the management of anesthesia;
biological and biochemical drug and cultures for medical
use, namely, biological tissue cultures for medical
purposes; culture fluids for cultivating human, and animal
cells and plants, plant cells and plant tissues; culture
media for cultivating human, and animal cells and plants,
plant cells and plant tissues; culture media for use in
culturing eukaryotic cells; pharmaceutical biological and
biochemical drugs for the treatment of neoplasms and
autoimmune disease, in Int. Class 5;
Office functions relating to the registration of
pharmaceutical preparations and components and
pharmaceutical drugs; office functions relating to
obtaining pharmaceutical registrations and compiling
pharmaceutical registration files; business mediation of
agreements regarding the purchase, sale and licensing of
pharmaceutical registrations and pharmaceutical
registration dossiers; business advice and information;
business consultation; procurement of contracts for others
for the purchase and sale of goods; business services,
namely, compiling of pharmaceutical registration dossiers
for others, in Int. Class 35;
Treatment of materials for the manufacture of
pharmaceutical and biopharmaceutical preparations;
manufacture, for others, of pharmaceutical and
biopharmaceutical preparations and raw materials for the
pharmaceutical industry, all in the field of treatment of
cancer, multiple sclerosis and disorders of the central
nervous system, neoplasms and autoimmune diseases and
those intended for the treatment of kidney and
genitourinary disorders, cardiovascular disorders,
metabolic and gastric disorders, blood disorders, bone
disorders, hormonal disorders, treatment of pain, fungal
and bacterial diseases and preparations used in the
management of anesthesia, in Int. Class 40;
Scientific laboratory services; scientific research and
development; scientific and technological services, namely,
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scientific analysis and testing services in the field of
pharmaceuticals and pharmaceutical ingredients;
scientific consultation services in the field of
pharmaceuticals and pharmaceutical ingredients;
scientific investigations for medical purposes;
pharmaceutical research and development;
pharmaceutical drug development services; laboratory
research services relating to pharmaceuticals; consulting
services in the fields of biotechnology and pharmaceutical
research and development; biomedical research and
consultancy; medical research; medical laboratories;
chemistry and biology laboratories; scientific laboratory
services; development of pharmaceutical products and
ingredients; providing medical and scientific research
information in the field of pharmaceuticals; providing
medical and scientific research information in the field of
clinical trials; quality management services, namely,
quality evaluation and analysis, quality assurance and
quality control, in the field of pharmaceuticals; laboratory
research and laboratory analysis services relating to
pharmaceuticals and pharmaceutical ingredients; research
and scientific design of pharmaceutical products and
ingredients for the pharmaceutical industry; research and
development in the field of oncology, central nervous
system, neoplasms and autoimmune diseases and life-
threatening diseases; drug discovery; product quality
testing; conducting clinical trials for pharmaceutical
preparations; conducting quality control of pharmaceutical
preparations; providing information and data relating to
pharmaceutical research and developments,
biopharmaceutical research and developments and
medical research and developments, all in the field of
treatment of cancer, multiple sclerosis and disorders of the
central nervous system, neoplasms and autoimmune
diseases and those intended for the treatment of kidney
and genitourinary disorders, cardiovascular disorders,
metabolic and gastric disorders, blood disorders, bone
disorders, hormonal disorders, treatment of pain, fungal
and bacterial diseases and preparations used in the
management of anesthesia, in Int. Class 42;
Legal services relating to obtaining pharmaceutical
registrations and compiling pharmaceutical registration
files; providing legal services and information in the field
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of intellectual property; legal advice in the field of
intellectual property, in Int. Class 45.1
The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the registered mark
SYNTHEON in standard characters for the following services:
Custom manufacture of medical devices; Manufacture of
medical devices to order and/or specification of others;
Manufacturing services for others in the field of medical
devices in Int. Class 40;
Design and testing for new medical device product
development; Development of new technology for others in
the field of medical devices; Industrial research in the field
of medical devices; Medical and scientific research in the
field of medical devices; Medical device research; Medical
device research and development; Research and
development and consultation related thereto in the field
of medical devices; Research and development for new
medical device products for others; Scientific research and
development of medical devices; Medical device product
development consultation; Medical device product
development for others in Int. Class 42.2
After the Examining Attorney made the refusal final, Applicant appealed. For the
reasons set forth below, we affirm in part and reverse in part the refusal to register.
II. Likelihood of Confusion
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on the likelihood of confusion. In re E.I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors

1 Application Serial No. 87464096 is based on Sections 1(b) and 44(e) of the Trademark Act,
15 U.S.C. §§ 1051(b) & 1126(e), and has a filing date of May 25, 2017.
2 Registration No. 3625206 issued May 26, 2009 on the Principal Register and has been
renewed.
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to be considered, hereinafter referred to as “du Pont factors”); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the relatedness of the goods and services. See In re Chatam Int’l Inc.,
380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“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.”). “[I]t is sufficient for
finding a likelihood of confusion if relatedness is established for any item
encompassed by the identification of goods [or services] within a particular class in
the application.” In re Aquamar, Inc., 115 USPQ2d 1122, 1126, n.5 (TTAB 2015); see
also Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981).
A. Similarity of the Marks
We first turn to the du Pont factor comparing the applied-for and cited marks,
which we consider “in their entireties as to appearance, sound, connotation and
commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du
Pont, 177 USPQ at 567). The test assesses not whether the marks can be
distinguished in a side-by-side comparison, but rather whether their overall
commercial impressions are so similar that confusion as to the source of the goods
and services offered under the respective marks is likely to result. Coach Servs. v.
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Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see
also Edom Labs., Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012).
SYNTHON and SYNTHEON vary by only one letter, resulting in a similar
appearance and sound. While Applicant correctly notes that the additional “E” in the
cited mark may result in an additional syllable as the mark is likely to be pronounced,
we nonetheless find this variation relatively insignificant. The marks look similar
and would sound similar when consumers call for the goods or services with which
they are used. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed.
Cir. 2012). Also, regardless of the variation in pronunciation of the last syllable,
consumers who hear the marks spoken by others might not notice, or could easily
forget, the difference. See id. at 1912; In re Energy Telecomms. & Elec. Ass’n, 222
USPQ 350, 351 (TTAB 1983) (“Slight differences in the sound of similar marks do not
avoid a likelihood of confusion.”). We remain mindful that “marks must be considered
in light of the fallibility of memory and not on the basis of side-by-side comparison.”
In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014). The
record lacks evidence that SYNTHON and SYNTHEON have any meaning. Rather,
both appear to be coined terms and we therefore also find the connotation and
commercial impression to be similar because the spelling and pronunciation is so
similar. This du Pont factor weighs in favor of likely confusion.
B. The Goods and Services
“[L]ikelihood of confusion can be found ‘if the respective products [and services]
are related in some manner and/or if the circumstances surrounding their marketing
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are such that they could give rise to the mistaken belief that they emanate from the
same source.’” Coach Servs. 101 USPQ2d at 1722 (internal citations omitted). The
relatedness of goods and services must be supported by substantial evidence. Viterra,
101 USPQ2d at 1907.
In analyzing the second du Pont factor, we look to the identifications in the
application and cited registration. See In re Detroit Athletic Co., 903 F.3d 1297, 128
USPQ2d 1047, 1052 (Fed. Cir. 2018); Stone Lion Capital Partners v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v.
Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
The Examining Attorney argues very generally that “in the industries of
pharmaceuticals and medical devices the goods and services in question are related.”3
Despite Applicant’s five classes of goods and services, the Examining Attorney’s Brief
contains only three sentences on the relatedness of the goods and services, pointing
to four examples of evidence in the record she says show that “pharmaceutical and
pharmaceutical research companies also provide and develop medical devices.”4 This
is the extent of the discussion, and her brief does not otherwise address the
relatedness of Applicant’s specifically identified goods and services, even to explain
or set forth the evidence of relatedness as to at least one good or service in each of the
five international classes in the application as compared to at least one service recited
in the Registration.

3 7 TTABVUE 5 (Examining Attorney’s Brief).
4 Id.
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While we agree that some of the evidence suggests that certain providers of goods
and services generally cater to both the pharmaceutical and medical device
industries,5 we cannot paint with such a broad brush in determining relatedness
under this factor. We must turn to the prosecution history of the application to review
the evidence and consider, on a class-by-class basis, whether substantial evidence
shows the relatedness of at least one good or service per class to at least one service
in the cited registration. See Aquamar, Inc., 115 USPQ2d at 1126 n.5. The record does
not contain third-party registrations as evidence under this du Pont factor. Instead,
the evidence consists of webpages of various different types of businesses, ranging
from legal and communications consultants to technical experts and engineers, to
contract manufacturers, to pharmaceutical or medical device industry consultants.6
First, as to Applicant’s Class 5 goods, the record lacks evidence that consumers
are accustomed to encountering pharmaceutical products such as Applicant’s under
the same mark as medical device-related services such as Registrant’s. While several
websites introduced by the Examining Attorney involve consultants or experts who
serve both pharmaceutical companies and medical device manufacturers, there is no

5 E.g., June 22, 2017 Office Action at 14, 19 (plm.automation.siemens.com) (the Siemens
website has a page entitled “Medical Devices and Pharmaceuticals”); id. at 20 (mckinsey.com)
(website of McKinsey features the heading “Pharmaceuticals & Medical Products” and states,
“Our R&D clients include major pharmaceutical companies, medical device
manufacturers….).
6 Some of the Examining Attorney’s evidence seems to involve only pharmaceuticals and
related services (e.g., AVOMEEN website and Exova website at January 25, 2018 Office
Action at 2-8), and thus does not show the relatedness of such goods and services to
Registrant’s medical device-related services. Also, the ARBRO Pharmaceuticals website
indicates that its pharmaceutical and medical device testing laboratories are all located in
India, so we do not find this evidence probative of the relatedness of the goods in the United
States. January 25, 2018 Office Action at 9-10.
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indication that these companies provide the type of Class 5 goods at issue. The only
potentially directly relevant relatedness evidence for this class is the website of
Johnson & Johnson, which lists under “Our Products” both “Medical Devices” and
“Prescription Products,” and provides an overview of health care products including
medical technology products that doctors and nurses use “to perform hip
replacements, implant coronary stents, and run tests for metastatic breast cancer”
and “prescription medicines [that] treat a wide array of conditions, ranging from
migraines and rheumatoid arthritis to cancer and serious infections.”7 However,
under the circumstances, this single example does not establish a prima facie case of
relatedness as to Applicant’s Class 5 goods.
Turning next to Applicant’s Class 35 services that at their broadest include
“business consultation,” we confront a similar lack of evidence. While some of the
marketplace evidence involves business consultation such as Applicant’s, we find no
clear indication among the webpages in the record that consumers are exposed to
these types of services offered under the same mark as medical device manufacture
or medical device research and development, as set forth in the cited registration.
Thus, on this record, we cannot find these services related.
For Applicant’s Class 40 services involving the treatment of materials for, and
manufacture for others of, pharmaceutical and biopharmaceutical preparations, we

7 TSDR June 22, 2017 Office Action at 10-11 (jnj.com). The Stratos website mentions
“ACELRX Pharmaceuticals” as well as various medical devices, but it appears to be a
company that assists with “Product Design & Strategy” rather than a direct provider of
pharmaceuticals and medical-device related services under the same mark. Id. at 16-18
(stratos.com).
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similarly find that, with perhaps one exception, the web evidence relating to these
types of services does not show them offered under the same marks as the services in
the cited registration.8 The record is insufficient to show the relatedness of these
services.
We find that on their face, Applicant’s Class 42 services overlap with the services
recited in the cited registration, making them legally identical in part. Applicant’s
“medical research” services in this class encompass Registrant’s “medical device
research” services in the same class. See, e.g., In re Hughes Furniture Indus., Inc.,
114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of
‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and
commercial furniture.’”); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992)
(“Registrant’s goods are broadly identified as computer programs recorded on
magnetic disks, without any limitation as to the kind of programs or the field of use.
Therefore, we must assume that registrant’s goods encompass all such computer

8 The AMP (Alliance Medical Products) website describes the company as “a contract
manufacturer with a unique blend of pharmaceutical, medical device and laboratory
expertise….” AMP also promotes that “[w]hether you’re a pharmaceutical/biotechnology or
medical device company … [AMP] has the scalability to meet your special manufacturing
requirements and timelines.” June 22, 2017 Office Action at 25-26 (amp-us.com). The only
other evidence that at first seems potentially relevant falls short. The Battelle website
includes a page titled “Pharmaceutical & Medical Devices,” and notes that Battelle helps
“pharmaceutical and medical device companies get new therapies to market faster and more
efficiently. Our integrated science, technology and engineering offerings feature some of the
world’s greatest minds creating and improving innovative, commercial-ready device
technologies and enhancing the safety and efficacy of life-saving pharmaceuticals.” Id. at 12-
13 (battelle.org). However, we cannot conclude that this includes manufacturing services or
materials treatment. We have a similar assessment of the Dynamic Automation website,
which appears to promote manufacturing machinery that may be used in both industries, but
not necessarily any of the recited services at issue here. January 25, 2018 Office Action at 15
(dynamicautomation.com).
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programs including those which are for data integration and transfer.”). Similarly,
Applicant’s “scientific research and development” services encompass Registrant’s
“scientific research and development of medical devices” services in the same class.
Evidence submitted by the Examining Attorney also supports the relatedness of the
relevant services.9 This factor supports likely confusion as to Applicant’s Class 42
services.
Finally, as to the legal services in Class 45, the only evidence of such services, the
websites of the Nutter law firm10 and of LEVICK’S,11 give no indication that they also
provide services such as Registrant’s. We therefore lack the necessary evidence to
find Applicant’s Class 45 services related to Registrant’s services.

9 For example, PPD’s website touts its “Pharmaceutical Expertise” and “resources to conduct
global clinical trials across six continents” and states that “PPD has partnered with
biotechnology companies to help them deliver life-changing and lifesaving therapeutic and
diagnostic products.” Under the heading “Medical Device,” it also promotes that “Clients can
accelerate the process of bringing their new products to market with the experience,
resources and global reach of PPD’s medical device development team.” June 22, 2017 Office
Action at 9 (ppdi.com); see also January 25, 2018 Office Action at 22-23 (ppdi.com). The
website of CECON Science & Engineering Consultants uses the slogan “Experts at Finding
Technical Experts” and includes a page for “Pharmaceutical/ Biopharmaceutical/ Medical
Devices/Regulatory” promoting “comprehensive technical support in all areas of the drug
development life cycle” as well as “medical device experts [who] understand bio materials,
system design and regulatory requirements necessary to develop, manufacture and integrate
such devices into to [sic] living systems.” January 25, 2018 Office Action at 18-21 (cecon.com).
10 June 22, 2017 Office Action at 24 (nutter.com). The webpage for the Nutter law firm’s Life
Sciences: Biotechnology, Pharmaceuticals & Medical Devices Practice Group states, “our
interdisciplinary team provides biotech, pharma and medical device clients with a
comprehensive service solution – from intellectual property and transactional advice to
government enforcement, products liability and regulatory matters.”
11 January 25, 2018 Office Action at 11-14 (levick.com). The LEVICK’S website describes its
“Pharmaceutical and Medical Device team” as providing legal and communications services
to the pharmaceutical and medical device industries.
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C. Trade Channels and Classes of Consumers
Turning to the trade channels and consumers, as to Applicant’s services in
International Class 42, because they are legally identical in part to Registrant’s, we
presume that the services also move in identical channels of trade and are available
to identical classes of potential consumers. See Inter IKEA Sys. B.V. v. Akea, 110
USPQ2d 1734, 1743 (TTAB 2014); L. & J.G. Stickley, Inc. v. Cosser, 81 USPQ2d 1956,
1971 (TTAB 2007) (“Because the goods of both parties are at least overlapping, we
must presume that the purchasers and channels of trade would at least overlap.”). In
addition, the relatedness evidence discussed above demonstrates that services such
as Applicant’s Class 42 services and those in the cited registration are featured
together on the same websites, and would be encountered by the same consumers.
As to Applicant’s remaining classes of goods and services, however, for the same
reasons discussed above regarding relatedness, the record lacks sufficient evidence
to show that these goods and services move in the same trade channels or to the same
classes of consumers as the services in the cited registration. To the extent that any
information about the channels of trade and classes of consumers can be discerned
from the identifications themselves, they appear to differ in the application, which
primarily is focused on the pharmaceutical industry, and in the cited registration,
which primarily is focused on the medical device industry. For Applicant’s Classes 5,
30, 35, 40, and 45, this factor weighs against likely confusion.
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D. Sophisticated Purchasing
Relying on the nature of the goods and services apparent from the face of the
identifications in the application and cited registration, Applicant contends that the
goods and services at issue “are sold to sophisticated purchasers and not impulse
purchasers.”12 In her brief, the Examining Attorney does not argue against this
premise, but contends that sophistication in a particular field does not immunize the
consumers from source confusion. She also implies that some of the relevant
consumers may include “the public,” and emphasizes that we must assess likely
confusion from the standpoint of the least sophisticated potential purchaser.
Some of Applicant’s services and all of Registrant’s services would seem to involve
relatively careful purchasing conditions and more sophisticated purchasers in their
respective specialized industries. See Elec. Design & Sales Inc. v. Elec. Data Sys.
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1392 (Fed. Cir. 1992) (“Just from the record
description of goods and services here one would expect that nearly all of opposer’s
and applicant’s purchasers would be highly sophisticated.”). However, for the Class 5
pharmaceuticals, “we must be sensitive to the fact that patients from the general
public will not exercise the degree of care exhibited by medical professionals.” See
Alfacell Corp. v. Anticancer Inc., 71 USPQ2d 1301, 1306 (TTAB 2004). By the same
token, the Class 35 “business advice and information; business consultation” and the
Class 45 “legal advice in the field of intellectual property” also encompass services for
small businesses or individual entrepreneurs who would not necessarily be

12 4 TTABVUE 10 (Applicant’s Brief).
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sophisticated or exercise great care. We therefore must consider ordinary members
of the public as potential purchasers of the Class 5 goods and the Class 35 and 45
services, and “Board precedent requires the decision to be based ‘on the least
sophisticated potential purchasers.’” See Stone Lion Capital Partners, 110 USPQ2d
at 1163.
We find that as to Applicant’s services in Classes 40 and 42, this factor weighs
against likely confusion, and for Applicant’s Class 5 goods and Class 35 and 45
services, for which the consumers are not necessarily sophisticated, this factor is
neutral.
Decision: Based on the similarity of the marks, the legally identical services in
International Class 42, with presumptively identical trade channels and classes of
consumers, confusion is likely, regardless of any degree of sophistication of the
relevant Class 42 consumers. The refusal to register Applicant’s mark as to the
services in International Class 42 is affirmed.
However, as to the remaining classes, despite the similarity of the marks, our
findings on the other relevant du Pont factors regarding the lack of relatedness of the
goods and services and the lack of similar trade channels and classes of consumers
who, for certain of the services, would exercise great care in purchasing, render
confusion unlikely. The refusal to register Applicant’s mark as to the goods in
International Class 5 and the services in International Classes 35, 40 and 45 is
reversed.