Takano Co., Ltd.

Trademark Trial and Appeal Board

Aug 10, 2010

No. 77412149 (T.T.A.B. Aug. 10, 2010)

Hearing: Mailed:
June 8, 2010 August 10, 2010
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Takano Co., Ltd.
________

Serial No. 77412149
_______

James M. Slattery of Birch Stewart Kolasch & Birch LLP for
Takano Co., Ltd.

Evelyn Bradley, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Hairston, Bucher and Cataldo, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Takano Co., Ltd. seeks registration on the Principal
Register of the mark (in standard character
format) for goods identified in the application, as amended,
as follows:
“apparatus for measuring weight, namely,
scales” in International Class 9;
“apparatus for measuring blood pressure, body
fat, weight and pulse, namely, body and
health monitoring machine for standard
measurements, namely, weight, body mass
index, body fat content, heart rate and blood
pressure, to be operated by an individual in
public indoor locations; mattress, cushions
and supporting devices for medical purposes”
in International Class 10;
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77412149
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“wheelchairs; convertible wheel chairs” in
International Class 12; and
“furniture; seats being furniture; chairs;
beds; tables; mattresses; cushions” in
International Class 20.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation based upon Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining
Attorney has taken the position that applicant’s mark, when
used in connection with the following subset of enumerated
goods in International Classes 10 and 12:
“apparatus for measuring blood pressure, body
fat, weight and pulse, namely, body and
health monitoring machine for standard
measurements, namely, weight, body mass
index, body fat content, heart rate and blood
pressure, to be operated by an individual in
public indoor locations,” and “wheelchairs;
convertible wheel chairs,”

so resembles the mark, HEARTWORKS registered for “medical
equipment, namely, diagnostic workstations in the field of
cardiology diagnostics, comprised of computer hardware and
monitors, associated graphical user interface, and
instruction manual sold in conjunction therewith” in

1 Application Serial No. 77412149 was filed on March 4, 2008
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.

Serial No. 77412149
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International Class 10,2 as to be likely to cause confusion,
to cause mistake or to deceive.
The Trademark Examining Attorney and applicant have
fully briefed the issues involved in this appeal and
appeared at an oral hearing held before this panel of the
Board. We reverse the refusal to register.
The Trademark Examining Attorney argues that these
respective goods “could travel in the same channels of
trade” and “could potentially be sold to the same class of
customers.” Trademark Examining Attorney’s brief at
unnumbered 6 and 7.
By contrast, in support of registrability, applicant
contends that equipment such as registrant’s in the field of
diagnostic cardiology are operated by doctors and/or
hospital specialists who are, by definition, dealing with
patients having cardiac problems. By contrast, applicant’s
machines are located in health promotion facilities, such as
sports gyms, where healthy persons want to use the
measurement machine to enhance and maintain their health.
The difference in the function and nature of these
respective machines dictates that there will be different
demographics between the ultimate users of each system,

2 Registration No. 3286859 issued to Cardiac Science
Corporation on August 28, 2007.

Serial No. 77412149
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distinct trade channels, and that the target audiences of
potential purchasers are totally different.
Likelihood of Confusion
We turn then to a consideration of the issue of
likelihood of confusion. Our determination of likelihood of
confusion is based upon our analysis of all of the probative
facts in evidence that are relevant to the factors bearing
on this issue. See In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In any likelihood of
confusion analysis, however, two key, although not
exclusive, considerations are the similarities between the
marks and the relationship between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to the du Pont factor focusing on the
similarities or dissimilarities in the appearance, sound,
connotation and commercial impression of the respective
marks. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005).
Serial No. 77412149
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The two marks are identical as to sound, connotation
and commercial impression, differing only to the extent that
applicant’s standard character drawing shows a mixture of
upper- and lower-case letters (e.g., HeartWorks) while
registrant’s is all upper-case letters (e.g., HEARTWORKS).
This slight difference in appearance is inconsequential, and
hence, this du Pont factor favors the position of likelihood
of confusion taken by the Trademark Examining Attorney.
We turn then to the du Pont factor focused on the
relationship of the goods. The evidence and arguments of
the Trademark Examining Attorney as to the relationship of
the goods is conflated with a discussion of trade channels
and classes of purchasers. For example, the Trademark
Examining Attorney argues that the goods are related because
applicant’s and registrant’s goods could potentially be sold
through the same trade channels to the same classes of
customers. She supports this contention by pointing to
companies that allegedly sell health monitoring equipment
for use in public places as well as in doctors’ offices and
hospital settings, and that goods such as diagnostic
workstations for cardiovascular purposes and wheel chairs
travel through the same channels of trade.
In turn, much of applicant’s brief and substantially
all of applicant’s counsel’s time at oral argument was
Serial No. 77412149
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devoted to the argument that these goods are dissimilar,
that the channels of trade have minimal overlap, at worst,
and that the Trademark Examining Attorney has failed to make
a prima facie case that these goods are related.
In this context, we examine the evidence that the
Trademark Examining Attorney points to in her brief
supporting a relationship of the goods along with her
discussion of that evidence, followed by applicant’s
arguments about the weakness of the evidence in supporting
the conclusions the Trademark Examining Attorney has drawn
from the respective websites.
The Trademark Examining Attorney
argues from registrant’s website that
in addition to diagnostic workstations, the registrant also
sells products such as blood pressure monitoring equipment,
defibrillators, and pulse oximeters.3 She argues that while
many of these items will be used in hospitals, medical
facilities and doctor’s offices, we must presume they will
also be available in public settings such as sports gyms.
Applicant counters that the Trademark Examining
Attorney’s screen-prints emphasize that registrant is “a
global leader in the development, manufacture, and marketing
of diagnostic and therapeutic, cardiology products and

3 http://www.cardiacscience.com/cardiology-products/
Serial No. 77412149
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services.” Registrant’s listed goods comprise a
sophisticated computer workstation. The related monitoring
and emergency equipment (not included in the registration)
would presumably also be used for the diagnosis and
treatment of heart disease. Furthermore, the Trademark
Examining Attorney did not show that registrant even sells
blood pressure monitoring equipment to the general public
such as government agencies, sports gyms, schools,
pharmacies, retail grocery markets, etc. Certainly there is
no evidence in the file to demonstrate that registrant has
used its HEARTWORKS mark for those other goods.
We agree with applicant that the record supports the
conclusion that registrant’s HEARTWORKS products
identified herein are sold only to entities in the business
of diagnostic cardiology (e.g., doctors, hospitals and other
medical facilities). Furthermore, inasmuch as priority of
use is not an issue in ex parte cases, “the concept of
expansion of trade raised by the Trademark Examining
Attorney is generally addressed in the context of the issue
of priority in an inter partes proceeding” [In re 1st USA
Realty Professionals, Inc., 84 USPQ2d 1581 (TTAB 2007)].
Rather, in the ex parte context, we apply the traditional
analysis of the relatedness of the involved goods, and
Serial No. 77412149
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hence, have not considered the Trademark Examining
Attorney’s arguments as to “normal fields of expansion.”
The Trademark Examining Attorney has placed into the
record third-party web pages to demonstrate the relationship
of monitoring machines designed for public places to more
sophisticated equipment designed for diagnostic cardiology:

CBS Outernet Partners With Lifeclinic International to Bring Interactive
Health Programming and Advertising to Pharmacy Locations Nationwide
Posted on: Wednesday, 27 February 2008, 15:00 CST
NEW YORK, Feb. 27 /PRNewswire-FirstCall/ -- CBS Outernet, a leading provider of customized
digital media networks to retail locations; and Lifeclinic International, Inc., the world's leading
supplier of freestanding, automated vital signs monitoring equipment, today announced a definitive
partnership to bring interactive health programming and advertising to pharmacy locations
nationwide. The partnership will dramatically expand both companies' host of offerings to the retail
pharmacy marketplace.
Working together with CBS Outernet, Lifeclinic is introducing digitally connected "health stations" to
selected pharmacies nationwide, providing customers with a wide range of routine tests (such as
blood pressure, cholesterol, pulse and weight measurements), centralized Web-enabled storage of
test results, educational content and online disease management programs... 4

As noted by applicant, LifeClinic’s health monitoring
stations provide routine tests in retail pharmacy locations,
but there is no mention of cardiology diagnostics equipment.
Similarly, StayHealthy is another manufacturer of machines
similar to those of applicant and of LifeClinic, but was not
shown to manufacture or sell equipment for diagnostic
cardiology.5

4 http://www.redorbit.com/news/health/1272468/cbs_outernet
_partners_with_lifeclinic_international_to_bring_interactive_healt
h/index.html and http://www.lifeclinic.com/products.aspx.

5 http://www.stayhealthy.com/en_us/main/healthcenter_kiosk.
Serial No. 77412149
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Conversely, various manufacturers of very sophisticated
diagnostic cardiology equipment designed for use in a doctor’s
office or hospital are not making health apparatus for
access in public places:

Patient Monitoring
We manufacture and market a broad line of physiological monitors designed to provide for patient
safety and management of patient care. Our monitors are capable of continuous and simultaneous
measurement of many different vital signs. Our monitors are used in operating rooms, emergency
rooms, critical care units, post-anesthesia care units and recovery rooms, intensive care units, labor
and delivery rooms and magnetic resonance imaging, or MRI units. 6

Again, as noted by applicant, there is no mention that
Datascope’s monitors would be available in a public place.

Who We Are
Charter Kontron is an innovative provider of a comprehensive range of medical
devices and solutions such as patient monitoring, clinical information and cardiology
related systems, including haemodynamic, electrophysiology and telemetry systems.
We offer wide-ranging sales, service and after-sales support for professional health
care organizations and hospitals in the UK and worldwide. With a broad product range
and unsurpassed service, Charter Kontron is positioned as a leading international
player, offering cutting-edge, comprehensive solutions for clients tailored to meet their
specific needs. 7

6 http://www.hospital-
technology.com/contractors/Datascope/datascope.html

7 http://www.hospital-
technology.com/contractors/Charter/Charter1.html

Serial No. 77412149
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The sophisticated medical devices sold by Charter Kontron, a UK
company, are quite different from applicant’s machines designed
to measure public health in public places.

GE Medical Systems Information Technology is a global leader in providing solutions
for the reliable and efficient acquisition, analysis and management of patient data in
healthcare facilities around the world. The company’s offering includes cardiology,
patient monitoring, image management, clinical information systems and consultative
services… 8

9
GE Healthcare is a UK-based unit of General Electric’s
worldwide family of technology companies. GE Healthcare’s

8 http://www.hospital-
technology.com/contractors/GE/GEmedical.html

9 http://www.lychron.com/downloads/CA1000%20Brochure.pdf
Serial No. 77412149
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high-tech diagnostic cardiology equipment is used by doctors
and hospitals. As noted by applicant, there is no mention of
anything similar to the applicant’s monitoring machines, and
these sophisticated, computerized workstations would not be
placed, for example, in the local pharmacy or sports gym.
10

As noted by applicant, this GE Advantage workstation helps
combine data from a variety of disciplines drawn from
virtually any care area. These computerized workstations do not
include systems similar to the applicant’s apparatus for
healthy persons, designed for use in public locations.

GE also touts the LOGIQ E9 as the
ultrasound platform of the future.
This state-of-the-art diagnostic
equipment has little in common with
applicant’s measuring machines for
normal body metrics.11

10 https://www2.gehealthcare.com/portal/site/usen/
ProductLineDetail?vgnextoid=6d100eb653530210VgnVCM10000024dd1403RC
RD

11 http://www.gehealthcare.com/usen/ultrasound/
Serial No. 77412149
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GE also sells quite sophisticated
maternal-fetal monitors to
hospitals and medical clinicians
for the late stages of pregnancy,
labor and delivery. This is a far
cry from applicant’s monitoring machines in public places.
12
As seen in this brochure, Siemens Medical Solutions, USA
offers a computerized workstation able to display
ultrasound, secondary capture, computed tomography, magnetic
resonance, and x-ray angiographic images from a variety of
sources and media. This sophisticated equipment is for
medical specialists involved in diagnostic cardiology.
Finally, the Trademark Examining Attorney points out in
her brief that Siemens Medical also lists in its web pages
as an accessory to its cardiac diagnostic equipment, a

12 http://www.medical.siemens.com/siemens/sv_SE/gg_us_FBAs/
files/brochures/Acuson/90202-SS.pdf

Serial No. 77412149
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foldable, non-magnetic wheelchair for transporting patients
into the magnetic resonance room. However, it is advertised
and sold under the MEYRA® brand-name – marketed by a third-
party supplier unrelated to Siemens Medical. See
attachments to the Trademark Examining Attorney Office
action of August 4, 2009. We also find no probative value
in the fact that a price comparison shopping website
(www.mySimon.com) listed registrant’s diagnostic
computerized workstation among 264 other “Health Aids”
advertisements (with the listed products available through
eBay, Amazon.com, etc.), along with items distantly related
to wheelchairs, namely, a dental chair, a surgery chair, and
a vertical platform wheelchair lift.
We find ourselves in agreement with applicant that
these reviews of the marketplace undertaken by the Trademark
Examining Attorney (and many more websites and studies she
placed into the record that we have not mentioned herein)
fail to show that there would be a likelihood of confusion
as to the source of the respective goods herein. The
evidence fails to show that companies that make
sophisticated medical devices for hospitals or doctors'
offices also make health monitoring machines for use in
public places such as pharmacies, sports gyms and health
clubs. Not only do we find on this record a failure to
Serial No. 77412149
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demonstrate a close relationship between these respective
goods, but we find that the respective goods will move through
distinct channels of trade to substantially different classes
of purchasers.
As to the many third-party registrations placed into
the record by the Trademark Examining Attorney with the
first Office action, we were able to find nothing probative
on the question of the relationship of these goods among
those interminably long listings of medical products in
International Classes 9 and 10. Presumably, at the time she
prepared her brief, the Trademark Examining Attorney did not
find them especially compelling either inasmuch as there was
no mention of them anywhere in her appeal brief.
As to the cost of the respective types of goods of
registrant (diagnostic equipment for cardiology patients) and
of applicant (monitoring machines or kiosks for public
facilities) – the goods on which the majority of the Trademark
Examining Attorney’s Internet evidence and briefing were
focused – both of these sets of goods are relatively
expensive, and would be bought with care, either by medical
practitioners or those who manage sports gyms, health clubs,
schools, government agencies, pharmacies, grocery stores, or
other public places. All of the persons charged with
decision making at these various enterprises would be fairly
Serial No. 77412149
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sophisticated purchasers. Accordingly, these two related
du Pont factors also support applicant’s position herein
that there is not a likelihood of confusion.
In conclusion, while the marks are substantially
identical, this is outweighed by the fact that there is no
apparent relationship between the respective goods, there
are distinct channels of trade, the salient goods are
expensive and will be marketed to distinct groups of fairly
sophisticated persons.
Decision: The refusal to register under Section 2(d)
of the Lanham Act is hereby reversed, and this application
will be published in all four classes of goods.