TriVascular, Inc.

Trademark Trial and Appeal Board

Nov 27, 2012

No. 77941535 (T.T.A.B. Nov. 27, 2012)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
November 27, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re TriVascular, Inc.
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Serial No. 77941535
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Carole F. Barrett of Arnold & Porter LLP for TriVascular, Inc.

Andrea Koyner Nadelman, Trademark Examining Attorney, Law Office 110 (Chris
A. F. Pedersen, Managing Attorney).
_____

Before Zervas, Bergsman, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
TriVascular, Inc. has applied to register on the Principal Register the mark
OVATION in standard character form for the following goods, as amended1:
Medical devices, all for the treatment of vascular disease,
namely; stents, synthetic endovascular grafts, vascular
prostheses, synthetic thoracic stent grafts, synthetic
abdominal stent grafts, vascular implants comprising
artificial material; vascular implant delivery systems
comprised of catheters, valves, sheaths, handles and
chassis; and accessories for the aforesaid goods, namely,

1 Application Serial No. 77941535, filed on February 22, 2010 on the basis of applicant’s
bona fide intention to use the mark in commerce, under Trademark Act § 1(b), 15 U.S.C.
§1051(b).
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introducer sheaths, curable polymeric implant fill
material, implant fill material mixing devices, implant fill
material injectors and implant fill material syringes, in
International Class 10.
The trademark examining attorney issued a final refusal of registration
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
applicant’s mark, when applied to its goods, so resembles the mark OVATION,
which is registered on the Principal Register in standard character form for
“Orthopedic implants and prosthesis, namely, hip prosthesis, used in joint
reconstruction surgery,”2 as to be likely to cause confusion, or to cause mistake, or
to deceive. We reverse.
We turn first to an evidentiary objection raised by the examining attorney in
her brief. Applicant submitted with its brief, for the first time, a Declaration of
Meredith Huetter, applicant’s Senior Director, Global Marketing and Education.
The examining attorney objected to this evidence on the ground that it is untimely;
the examining attorney declined to address the contents of the declaration in her
brief.3
“The record in the application should be complete prior to the filing of an
appeal. The Trademark Trial and Appeal Board will ordinarily not consider
additional evidence filed with the Board by the appellant or by the examiner after
the appeal is filed.” 37 C.F.R. § 2.142(d). See also TBMP § 1207.01. In accordance
with this general rule, the Board has not considered the Huetter declaration. The

2 Reg. No. 3,886,524, issued on December 7, 2010.
3 Examining Attorney’s brief, unnumbered p. 3.
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applicant has the responsibility to make sure that the record is complete prior to
filing a notice of appeal. In re Van Valkenburgh, 97 USPQ2d 1757, 1768 n. 32, 1769
(TTAB 2011).
We turn next to the merits of the refusal. 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. In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). The record contains evidence relevant to the similarity of the marks, the
nature of the goods at issue, the trade channels through which the goods are offered
and, most importantly, the customers to whom the respective goods are directed.
Applicant’s mark is identical to the mark in the cited registration, and
applicant does not dispute this fact. To mitigate this factor, applicant submitted
Trademark Office records regarding registrations and applications relating to
marks that include the designation OVATION,4 apparently to show that the mark
OVATION is used by others in the marketplace. Such evidence does not effectively
demonstrate that the marks shown in the registrations and applications are
actually in use. We see no reason to believe that the mark OVATION is weakened
by dilution. Rather, considering that the mark is arbitrary with respect to the all of
the goods at issue, it is an inherently strong mark entitled to a broad scope of

4 Applicant’s Exhibit E, U.S. registrations of marks that consist of or include the
designation OVATION; and Applicant’s Exhibit F, information relating to the application
underlying the cited registration (Serial No. 77024607) and a third-party application (Serial
No. 77886794), from the online records of the U.S. Patent and Trademark Office.
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protection. Accordingly, the factor regarding the identity of the marks weighs
heavily against the applicant.
We next consider the similarity or dissimilarity of the goods at issue. For
purposes of determining the full scope of the parties’ goods, we look only to the
goods as they are identified in the applicant’s application and the cited registration.
Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing Kalart
Co., Inc. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958). The
applicant has offered significant evidence relating to the nature of the goods at
issue. We consider it to the extent that it elucidates and is not inconsistent with the
respective identifications of goods.
The evidence shows that the goods of both applicant and registrant are
medical devices in the nature of prosthetics, designed to be implanted into a
patient’s body through complex surgery. In the case of applicant, the goods are
stents, grafts, prostheses and implants “all for the treatment of vascular disease,”
and devices for use in implanting such goods in patients. To explain the nature of
the goods, applicant has supplied dictionary evidence indicating that “vascular”
means “Of, relating to or containing blood vessels” and “Having to do with blood
vessels.”5 As an example of the purpose of the goods, applicant has supplied
information regarding the procedure of endovascular repair, whereby a surgeon

5 Applicant’s Exhibit A, definition of “vascular” from the online reference THE FREE
DICTIONARY, accessed on November 24, 2010 at http://medical-
dictionary.thefreedictionary.com/vascular.
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makes small incisions in the patient’s groin area to access the femoral arteries and
places an endovascular stent graft in the diseased section of the aorta in order to
create a new path for blood flow.6 Applicant has also supplied technical marketing
materials relating to its TriVascular Ovation™ Abdominal Stent Graft System,
indicating that the system “is indicated in subjects diagnosed with an aneurysm in
the abdominal aorta having vascular morphology suitable for endovascular
repair….”7
The registrant’s goods are a hip prosthesis for use in joint reconstruction
surgery. The identification of goods also characterizes the goods as “orthopedic” in
nature. Applicant has submitted dictionary evidence indicating that “orthopedic,”
means “pertaining to the correction of abnormal form or relationship of bone
structures.”8 Applicant has also submitted information regarding types of
orthopedic surgery from the website of The American Board of Orthopedic Surgery,9

6 Applicant’s Exhibit B, excerpt of applicant’s website, entitled “What is endovascular
repair?” See also Applicant’s Exhibit 4, information regarding vascular surgery, accessed at
on June 17, 2011.
7 Declaration of William C. Revelos, Exhibits A, B and C. A somewhat less technical
description of applicant’s goods is also set forth in Applicant’s Exhibit D, excerpt of
applicant’s website, entitled “What is the Ovation Thoracic Graft System?”
8 Applicant’s Exhibit C, definition of “orthopedic” from the online reference THE FREE
DICTIONARY, accessed on November 24, 2010 at http://medical-
dictionary.thefreedictionary.com/orthopedic.

9 Applicant’s Exhibit 2, excerpt of the website of The American Board of Orthopaedic
Surgery, accessed at on June 20, 2011.
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and Wikipedia entries relating to “hip replacement” and “orthopedic surgery.”10, 11
Applicant’s Exhibit 1 indicates:
Hip replacement is a surgical procedure in which the hip
joint is replaced by a prosthetic implant. Hip replacement
can be performed as a total replacement or a hemi (half)
replacement. Such joint replacement orthopaedic surgery
generally is conducted to relieve arthritis pain or fix
severe physical joint damage as part of hip fracture
treatment. A total hip replacement (total hip
arthroplasty) consists of replacing both the acetabulum
and the femoral head while hemiarthroplasty generally
only replaces the femoral head.
…
Total hip replacement is most commonly used to treat
joint failure caused by osteoarthritis.
…
The prosthetic implant used in hip replacement consist
[sic] of different parts, the acetabular cup, the femoral
component and the articular interface. Options exist for
different patients and indications.
WIKIPEDIA, entry for “Hip replacement.” See Exhibit 1.
Applicant’s Exhibit 5 states:
Orthopedic surgery or orthopedics… is the branch of
surgery concerned with conditions involving the
musculoskeletal system. Orthopedic surgeons use both
surgical and nonsurgical means to treat musculoskeletal

10 Applicant’s Exhibits 1 and 5, entries for “hip replacement” and “orthopedic surgery” from
, accessed on June 17, 2011.
11 The Board will consider evidence from Wikipedia so long as the nonoffering party has an
opportunity to rebut that evidence; it is preferred that such evidence be corroborated with
other reliable sources. In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 n.4, 6, 7 (TTAB 2009);
TBMP § 1208.03. Inasmuch as applicant’s Wikipedia evidence was submitted prior to
issuance of the examiner’s final refusal and is corroborated by other evidence of record, we
have considered it.
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trauma, sports injuries, degenerative diseases, infections,
tumors, and congenital disorders.
WIKIPEDIA, entry for “Orthopedic Surgery.” See Exhibit 5.
The same entry sets forth the 25 most common procedures performed by
orthopedic surgeons. These include a variety of procedures upon the knee, shoulder,
carpal tunnel, leg bones, hip, tendons, ankle, and spine. Id. We find the evidence
quoted above germane to an understanding of the nature of registrant’s goods and
the potential scope of the identification of goods in the registration.
The examining attorney argues “that the goods are highly related, and that
they travel in the same channels of trade,” and that “[b]usinesses provide medical
products used in both vascular and orthopedic procedures.”12 To demonstrate the
degree of relatedness among the goods, the examining attorney has submitted eight
third-party registrations purporting to demonstrate instances wherein a single
mark was registered by its owner both for stents (similar to those of applicant) and
orthopedic implants (similar to those of registrant). Such registrations, if they are
based on use in commerce, may have some probative value to the extent that they
serve to suggest that the listed goods are types that may emanate from the same
source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786; In re Mucky
Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). Applicant has
objected that the goods covered by these third-party registrations are broadly
identified and that it is not possible to tell from the face of the registrations whether
the identified goods are, in fact, stents “for the treatment of vascular disease” and

12 Examining Attorney’s brief at unnumbered pp. 7-8.
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implants that are “orthopedic and used in joint reconstruction surgery,” as opposed
to other types of stents and implants.13 With respect to most of the third-party
registrations, the applicant’s objection is well taken. We have given due
consideration to all eight of the third-party registrations proffered by the examining
attorney. Those which do not clearly indicate the specific types of stents and
implants are, at best, evidence of the possibility that goods similar to those of
applicant and registrant may emanate from a single entity. However, they are not
highly probative and we have accordingly given them limited weight. We do note,
in particular, the following third-party registrations:
Reg. No. 2813488 (INSIGHTRA) covering “stents,
balloons…, intra-aortic balloons, prosthetic implants,
orthopedic implants….”
Reg. No. 3004736 (I.C.) covering “stents…, cardiovascular
devices, namely, pacemakers,… heart valves…,
orthopedic devices, namely, joint implants….”
Reg. No. 3780186 (TELEFLEX) covering “intra-aortic
balloon pumps…, artificial orthopedic joint implants…,
stents, flushing and balloon catheter test chamber….”
In the context of the other goods listed in these registrations, one may
reasonably conclude that the identified “stents” are vascular stents. Moreover, the
implants are clearly identified as orthopedic implants for use in orthopedic surgery.
Hence, these registrations do suggest that products similar to the goods of both
applicant and registrant may emanate from a single source.
Considering this evidence together with the evidence submitted by applicant
to demonstrate the nature of the goods, we find the goods of applicant and

13 Applicant’s brief at 7-8.
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registrant to be relatively unrelated. It is true that all of the goods are implantable
medical devices. However, registrant’s goods are artificial bones and joints intended
to replace the rigid structures of the skeleton while applicant’s goods are artificial
blood vessels intended to replace portions of the soft tissues of the circulatory
system. Such goods cannot substitute for each other or be used together in a single
medical procedure. There can be no doubt that the respective goods are
technologically quite distinct, and we expect the processes and methods of
manufacturing the two types of goods to be substantially different. We can
appreciate that a medical products company might find it efficient to produce
diverse types of medical goods. However, nothing in the record indicates that the
parties’ respective goods are more closely related to each other than they would be
to other medical products. Neither does the evidence suggest that the fields of
vascular medicine and orthopedics are more closely related to each other than to
other medical specialties. Accordingly, we find that the factor of the similarity or
dissimilarity of the goods favors the applicant.
A critical question in this analysis under Section 2(d) is whose confusion
should trigger a refusal of registration. Edwards Lifesciences Corp. v. VigiLanz
Corp., 94 USPQ2d 1399, 1412 (TTAB 2010). Applicant argues that the relevant
customers for the goods are two separate and distinct classes of surgeons – vascular
surgeons and orthopedic surgeons – who neither do each other’s work nor purchase
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each other’s goods. Applicant has submitted a legal consultant’s declaration14
stating as follows:
7. Given the division of medicine into areas of
specialization, physicians only purchase and use medical
devices particular to their respective fields. Orthopedic
devices are sold to physicians who specialize in
orthopedics and orthopedic surgery. Vascular devices are
sold to physicians who specialize in cardiovascular disease
and/or vascular surgery.
8. Since vascular devices and orthopedic devices are
specialized medical products, they cannot be purchased
from retail store shelves – they must be purchased
through the manufacturer via sales representatives.
Further, they are only purchased after careful study and
consideration. To aid physicians in the purchasing
process, Applicant supplies detailed, highly technical
marketing materials. These are generally given to
physicians and other medical professionals in the context
of an in-person office visit by one of the Applicant’s
representatives, or at a conference or event aimed
specifically at cardiovascular disease specialists.
Revelos Declaration, ¶¶ 7-8.
To indicate the highly specific – and distinct – expertise of the surgeons who
purchase the goods, applicant has submitted information from the websites of The
American Board of Orthopaedic Surgery and the American Board of Vascular
Medicine relating to certification by these boards of practitioners of orthopedic
medicine and vascular medicine, respectively.15 The implication of the evidence is

14 The declarant states that he is a legal consultant to applicant, that he has bachelor’s and
master’s degrees in engineering mechanics and mechanical engineering, respectively, that
he has been in-house counsel to several medical device companies, and that he counsels
medical and healthcare companies regarding the “development, manufacture, and
marketing of medical devices.” Revelos Declaration, ¶¶ 1-3 and 5.
15 Applicant’s Exhibit 2; and Applicant’s Exhibit 3, excerpt from the website of American
Board of Vascular Medicine, accessed at on June 20, 2011.
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that a physician who meets the requirements of both disciplines would be an
extremely rare individual. The applicant urges that the sophistication of the
respective purchasers of applicant’s goods and registrant’s goods would render
confusion unlikely.
Against this, the examining attorney argues that “It is entirely feasible that
someone other than a physician, such as a hospital administrator or a medical office
manager, would purchase medical devices used by physicians.”16 The examining
attorney also argues that entities such as “medical wholesale companies, hospitals
and clinics” should be considered relevant customers for the goods, that “purchasing
agents for any of these companies” might be offered the goods,17 and that the Board
has so presumed with respect to medical goods when channels of trade were not
limited, citing In re Cordis Corporation, Serial No. 75850715 (non-precedential)
(TTAB 2002). The examining attorney also criticizes the Revelos Declaration on the
ground that the declarant is not a “consumer who utilizes the goods.”18
While the Revelos Declaration does not provide the purchaser’s perspective, it
does competently provide the seller’s perspective. We take at face value the
declarant’s assertion that physicians participate in purchasing the goods at issue,
although we tend to doubt that they are the only ones involved in purchasing the
goods and that no other types of personnel would be involved in the purchase
process. We find plausible the examining attorney’s suggestion that hospital

16 Examining Attorney’s brief at p. 9.
17 Examining Attorney’s brief at p. 10.
18 Examining Attorney’s brief at p. 9.
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administrators, medical office managers, purchasing agents, and other personnel of
hospitals, clinics, and medical wholesale companies might be involved in the
purchase of the goods and thereby encounter the goods and the marks of applicant
and registrant.
In our analysis of this question, we find useful guidance in Astra
Pharmaceutical Products, Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 220
USPQ 786 (1st Cir. 1983). In that case, which addressed goods sold to hospitals,
the Court readily perceived the separate departments of hospitals as “different
markets for the parties’ respective products.” Astra at 791. The Board’s reviewing
Court, in Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d
713, 21 USPQ2d 1388 (Fed. Cir. 1992), cited Astra with approval and followed its
logic, stating:
[I]t is error to deny registration simply because ‘applicant
sells some of its goods in some of the same fields in which
opposer provides its services,’ without determining who
are the ‘relevant persons’ within each corporate customer.
…
[T]he mere purchase of the goods and services of both
parties by the same institution does not, by itself,
establish similarity of trade channels or overlap of
customers.
Electronic Design at 1391 (internal citations omitted).
Considering the prospect that a common purchasing agent might be involved
in the selection of disparate goods for use in different departments, both Courts
concluded that the purchasing agent would not be the “relevant person” whose
potential confusion should be considered:
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Because a common purchasing agent for several
autonomous departments ‘merely fills out the necessary
forms and arranges the shipping details,’ even when there
is an overlap in purchasing persons due to a common
purchasing agent, such an agent is not necessarily a
‘relevant person’ for determining likelihood of confusion.
Id. (internal citation of Astra omitted).
The Astra and Electronic Design Courts both found that the relevant persons
whose potential confusion should be considered were those medical personnel
having specialized knowledge with respect to the goods, and found that the
sophistication of such personnel would be sufficient to render confusion unlikely.19
Considering the highly specialized and technological nature of the goods in
the case before us, we expect that any reasonable decision to purchase goods of
applicant or registrant would in all likelihood involve the advice of a person having
specialized expertise in orthopedics or vascular medicine, as appropriate, even if the
formalities of purchase are ultimately undertaken by a business administrator or
purchasing agent. A decision made without consideration of the technical needs
and preferences of the surgeons who will ultimately use the products would not, in
our view, be a reasonable one. Even a wholesaler would need to consider the needs
and preferences of the ultimate users in order to make a rational purchasing
decision. Accordingly, we find the “relevant persons” in the present case are the
orthopedic specialists and vascular medicine specialists (most likely surgeons) who
would actually use the goods. The evidence indicates that orthopedic specialists

19 We have considered the non-precedential case of In re Cordis, in which the goods were
cardiology stents versus “instruments for orthopedic surgery.” As “instruments” could cover
almost any kind of surgical device, that case dealt with goods that were less clearly
different in nature than prosthetic hips and artificial blood vessels.
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and vascular medicine specialists are likely to be separate classes of customers, so
that neither class is likely to have exposure to the products of interest to the other.
Considering the nature of the goods, one would expect both classes of purchasers to
exercise a high degree of care when making purchasing decisions. Those decisions
would be informed not only by the purchasers’ technical understanding of the goods,
but also by their exposure to the sellers’ marketing and outreach efforts which,
according to the evidence, are directed specifically to them, sometimes in person.
Revelos Declaration ¶ 8. In sum, these are two separate classes of highly informed,
careful, and sophisticated purchasers whose selection of the goods would be based
on very many factors of critical importance. Even if such a purchaser were to know
that the same trademark appears on different products used in a different medical
field, it would not likely have an untoward impact on the decision to purchase or not
purchase the goods.
Decision: The refusal to register is reversed and this application will be
forwarded to publication in due course.