Wright Medical Technology, Inc.

Trademark Trial and Appeal Board

Oct 30, 1998

No. 75024024 (T.T.A.B. Oct. 30, 1998)

Paper No. 10
DEB
10/30/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Wright Medical Technology, Inc.
________
Serial No. 75/024,024
_______
Russell H. Walker of Walker McKenzie & Walker, P.C. for
Applicant.
Tina L. Snapp, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______
Before Hohein, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Applicant, Wright Medical Technology, Inc., has filed
an application for registration of the mark "EXTEND" for
"medical apparatus, namely, orthopedic hip implants.”1
The Trademark Examining Attorney issued a final
refusal to register based upon Section 2(d) of the

1 Serial No. 75/024024, in International Class 10, filed
November 17, 1995, based on an allegation of a bona fide
intention to use the mark in commerce.
Ser No. 75/024,024
2
Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s proposed mark, "EXTEND," when used on
orthopedic hip implants, so resembles the registered mark,
“X-TEND” for “carpal tunnel supports, elbow supports,
thumb/wrist supports, back braces, all for medical or
therapeutic use,”2 as to be likely to cause confusion, or to
cause mistake, or to deceive.
Applicant has appealed the final refusal to register.
Briefs have been filed but applicant did not request an
oral hearing. We reverse the refusal to register.
With respect to the refusal on the ground of
likelihood of confusion, applicant asserts that the chances
for confusion are remote because the respective goods are
used in different medical specialties; that those who
prescribe these goods are extremely sophisticated; and,
that, in reality, the products are so very different that
one can conclude there is no overlap in the channels of
trade for these respective goods. Furthermore, applicant
notes that the trademarks are different as to spelling and
appearance.
The Trademark Examining Attorney contends that the
goods of both parties are medical devices in the nature of

2 Reg. No. 1,707,740, issued August 18, 1992; §8 affidavit
accepted & §15 affidavit received.
Ser No. 75/024,024
3
orthopedic products. The Examining Attorney concedes that
applicant’s target audience may be narrower than that of
registrant. However, according to the Examining Attorney,
there is a strong presumption that applicant’s goods will
be marketed, for example, to purchasing agents in
hospitals, as would registrant’s goods. Such a medical
professional might reasonably believe that a manufacturer
offering a product like orthopedic hip implants might also
sell back braces and external support devices for the
extremities. Finally, the Trademark Examining Attorney
points out that even sophisticated purchasers can be
confused by identical or highly similar trademarks.
Consequently, the Examining Attorney finds that hip
implants are so closely related to back braces and external
medical/therapeutical support devices that confusion as to
the origin or affiliation of the respective goods is likely
to occur.
In the course of rendering this decision, we have
followed the guidance of In re E.I. DuPont DeNemours & Co.,
476 F.2d 1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973),
which sets forth the factors which, if relevant, should be
considered in determining likelihood of confusion.3

3 We have not considered the declaration of Mr. Thomas M.
Patton, applicant’s President and Chief Executive Officer, filed
Ser No. 75/024,024
4
As has often been stated, it is well settled that
goods 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 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 thereon, to the
mistaken belief that they originate from or are in some way
associated with the same producer. 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). Here, however, the precision medical
apparatus manufactured and sold by applicant is a very
specialized device. Orthopedic surgeons comprise
applicant’s target audience. Even if hospital purchasing
agents and administrators are the professionals placing the
order in a given medical facility, they would do so only as
directed by the attending orthopedic implant surgeon.
According to applicant, registrant designs,
manufactures and markets medical and therapeutical devices.
This type of product is prescribed by physicians, fitted by

with the reply brief, since the Patton declaration is untimely
under Trademark Rule 2.142(d).
Ser No. 75/024,024
5
therapists specializing in rehabilitation, and should be
available at retail to members of the general public (e.g.,
in one’s local pharmacy). Registrant’s listed items tend
to be less expensive than applicant’s goods, as
manufactured they are fungible, they are intended for
external support only, and according to applicant, would
not be prescribed by an orthopedic surgeon. Conversely,
applicant points out the obvious -- that physicians or
therapists who specialize in occupational medicine and use
registrant’s therapeutic products would not be involved in
the decisions surrounding hip replacement surgery.
(Applicant’s brief, pp. 3-4)
The record includes printouts of seven federal
trademark registrations where goods resembling those of
applicant and registrant are listed on the same
certificate. These third-party registrations are submitted
as evidence of the asserted relatedness of the respective
parties’ goods involved herein. While we have considered
the evidence of these third-party registrations, its
probative value is limited.
On the one hand, these registrations do show that
seven entities have registered their marks for goods of the
type recited by applicant and for goods listed by
registrant. Registrations which individually cover a
Ser No. 75/024,024
6
number of different items and which are based on use in
commerce may have some probative value. Their value is the
suggestion that the listed goods are of a type that may
well emanate from a single source.
On the other hand, no third-party registration
demonstrates that the marks shown therein are in commercial
use. Federal trademark registrations do not prove that
members of the relevant public are familiar with the marks.
Furthermore, third-party registrations that issued
under Section 44(e) of the Act, 15 U.S.C. §1126(e), without
any use in commerce basis, have almost no persuasive value.
In the instant case, three of the seven third-party
registrations made of record by the Trademark Examining
Attorney issued under the provisions of Section 44(e) of
the Act, based only upon ownership of a foreign
registration. Such registrations have very little, if any,
persuasive value on the point for which they were offered.
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993), and cases cited therein.
The Trademark Examining Attorney is correct that both
parties' products are medical devices in the field of
orthopedics. Otherwise, applicant's goods are
significantly different from registrant's goods. They are
Ser No. 75/024,024
7
quite different in the manner in which they function and
the ways in which they are intended to be utilized.
That both parties are marketing orthopedic devices
does not mandate a finding that the products are related or
that confusion is likely. After all, the medical community
is not a homogeneous whole. Rather, hospitals and other
medical facilities comprise separate departments having
diverse purchasing requirements. As noted in Astra
Pharmaceutical Products, Inc. v. Beckman Instruments, Inc.,
718 F.2d 1201, 220 USPQ 786, 791 (1st Cir. 1983), these
departments constitute different markets for the parties’
respective products.
We find that this case does not reflect any meaningful
overlap in the channels of trade. The Examining Attorney’s
conclusions seem at odds with the real-world purchasing
decisions as outlined by applicant. We conclude that the
parties' respective products are different, with distinct
channels of trade.
Unlike registrant’s products, applicant’s products are
“fitted” by a specialized surgeon in hospital operating
rooms or other in-patient critical care settings.
Registrant’s goods are functionally quite different. They
would almost always be fitted in an outpatient setting.
They are used primarily in the field of occupational
Ser No. 75/024,024
8
medicine, by medical doctors specializing in rehabilitation
medicine and by other clinicians in related fields.
The Board is convinced that orthopedic hip
implantation is a highly specialized medical area. The
applicant and the Trademark Examining Attorney agree that
the purchaser4 for the purposes of trademark analysis
comprises a most sophisticated market. There may be
nuances of difference in their conclusions as to which
professional on the hospital team chooses among competing
vendors of this type of medical apparatus. In any event, a
small and select group of medical professionals –- the
orthopedic surgeon, operating room nurse supervisors and
hospital administrators or purchasing agents or committees
–- decides which firm or firms will be supplying the
implants. As applicant has pointed out, ultimately the
critical recommendation, if not the final decision, is made
by the surgeon.

4 The ultimate “consumer” of applicant’s device is hoping to
get a working hip –- she/he is not buying a medical apparatus.
Cf. Continental Plastic Containers Inc. v. Owens-Brockway Plastic
Products Inc., 141 F.3d 1073, 46 USPQ2d 1277 (Fed. Cir. 1998).
The hip implant patient is technically the end-user of these
sophisticated medical devices and related healthcare services.
In most cases, the patient will have chosen a medical facility or
surgeon based upon the reputation of the unit, or even the renown
of a particular orthopedic surgeon. It would stretch credulity
to believe that patients fitting the general profile of
candidates for hip replacement surgery are involved in comparison
shopping among manufacturers of such specialized medical
apparatus.
Ser No. 75/024,024
9
Orthopedic surgeons are well informed and
discriminating -- a most sophisticated group of consumers
who use great care in deciding the source of such an item.5
It seems to go without need for citation that surgeons
would not purchase EXTEND brand hip replacement implants on
an impulse, but only after deliberate and careful
consideration, knowing exactly with whom they are dealing.
Conversely, applicant argues that orthopedic surgeons would
not prescribe registrant’s therapeutic devices.
While the record is less clear about the exact type of
professionals making the purchasing decisions involving
registrant’s goods, buyers of registrant’s goods are also
highly educated, sophisticated purchasers who know their
equipment needs and would be expected to exercise a great
deal of care in its selection.
Applicant argues that it sells and advertises its
products only to the narrowest of markets. As far as the
instant products are concerned, applicant has a niche
market and targets orthopedic surgeons through professional
magazines, medical conferences, etc. Since as discussed

5 Our principal reviewing court has held that when the goods
of both parties are sophisticated medical equipment, they would
be selected with great care by purchasers familiar with the
source or origin of the products. See In re N.A.D. Inc., 754
F.2d 996, 224 USPQ 969, 971 (Fed. Cir. 1985).
Ser No. 75/024,024
10
earlier, registrant has quite a different market, we
conclude that the parties have disparate channels of trade.
The realities of the relevant marketplace make
confusion of the marks for these dissimilar goods decidedly
unlikely. The potential number of customers who would be
dealing with both companies in two separate, specialized
medical areas is minuscule or even non-existent. We find
that any overlap in customers is too small to be
significant. Inasmuch as this small population consists
entirely of highly educated, sophisticated, health-care
professionals any potential overlap is not dispositive in
this case.
This brings us to consideration of the parties’ marks.
The applicant and the Trademark Examining Attorney also
disagree over just how significant are the similarities or
differences in the two marks.
Registrant’s mark is “X-TEND.” Arguably, registrant’s
mark would be pronounced the same as if it comprised the
word “extend.” Applicant has adopted the mark “EXTEND,” an
ordinary word in the English language, used here in a
somewhat suggestive manner for hip implants. Considering
the marks in their entireties, applicant's mark and
registrant’s mark are identical phonetically but different
in appearance. As noted above, even if there should be a
Ser No. 75/024,024
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remote chance of some overlapping of ordering personnel in
the hospital setting, these are not items where the
purchasing transactions would be completed orally.
The target audience for applicant’s medical appliances
comprises sophisticated medical professionals. Hence, the
fact that the marks “EXTEND” and “X-TEND” differ in
appearance mitigates against a finding of likelihood of
confusion. The sophisticated buyers –- physicians and/or
hospital purchasing agents -- would readily recognize the
difference in the appearance of the marks if she or he is
acquainted with one mark and subsequently sees the other.
A decade ago, the Board had occasion to decide another
case where the first syllable of the two-syllable marks
differed visually in a remarkably similar way to these two
marks. In Information Resources Inc. v. X*Press
Information Services, 6 USPQ2d 1034 (TTAB 1988), the Board
held that the simultaneous use of the mark "EXPRESS" on
information software and the mark "X*PRESS" for service
comprising the transmittal of information to computers --
expensive items purchased with care and thought -- is not
likely to result in confusion, since inter alia, the marks
differ significantly in appearance (emphasis supplied).
More recently, the Board found that two marks of quite
similar appearances -- "DIGIRAD" and "DIGIRAY" -- would not
Ser No. 75/024,024
12
result in a likelihood of confusion although both were
being used on medical equipment sharing many of the same
characteristics.6 In the intervening decade, our principal
reviewing court reached a consistent result in an inter
partes contest, also in the medical field (E.D.S. v. EDS).7
Given the differences in the nature of the respective
goods; the differing marketing and trade channels involved;
the sophistication of the medical professionals --
especially physicians; the narrow scope of applicant’s
goods; and the de minimus chance of any potential overlap
in the respective customers, we find that the respective
marks are not so similar that confusion as to the origin or

6 The Board found no likelihood of confusion between
applicant’s DIGIRAD mark intended to be used on nuclear imaging
equipment, and registrant’s DIGIRAY and design mark, used on x-
ray imaging equipment. These goods were found not to be closely
related given the differences in relevant purchasers of these
goods, the sophistication of those purchasers, the care with
which such products are purchased, and the relative expense of
both products. The Board reached this conclusion even though
both x-ray imaging and nuclear imaging are medical diagnostic
technologies, both technologies involve use of a form of
radiation, and both types of imaging may be performed on patients
during diagnosis and/or treatment of an illness or injury. In re
Digirad Corp., 45 USPQ2d 1841 (TTAB 1998).
7 The Court found no likelihood of confusion between
"E.D.S.," for battery chargers and power supplies incorporated
into medical instruments, and "EDS," for computer services sold
to customers, inter alia, in the medical field, noting that the
purchasers are substantially different and are usually
sophisticated. Electronic Design & Sales Inc. v. Electronic Data
Systems Corp., 21 USPQ2d 1388 (Fed. Cir. 1992).
Ser No. 75/024,024
13
affiliation of applicant’s and registrant’s medical
equipment would be likely to occur.
Accordingly, we find no likelihood of confusion
between applicant's mark "EXTEND," for orthopedic hip
implants and registrant’s mark "X-TEND" for carpal tunnel
supports, thumb/wrist supports, and back braces for medical
and therapeutical use.
Decision: The refusal to register is reversed.
G. D. Hohein
B. A. Chapman
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board