Intuitive Surgical, Inc.v.DaVinci Radiology Associates, P.L.

Trademark Trial and Appeal Board

Jan 25, 2010

No. 91175319 (T.T.A.B. Jan. 25, 2010)

Mailed: January 25, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Intuitive Surgical, Inc.
v.
DaVinci Radiology Associates, P.L.
_____

Opposition No. 91175319
to application Serial No. 78728786
_____

Matthew Vanden Bosch for DaVinci Radiology Associates, P.L.

Michelle D. Kahn and Michelle J. Hirth of Sheppard, Mullin,
Richter & Hampton LLP for Intuitive Surgical, Inc.
______

Before Walters, Walsh and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, DaVinci Radiology Associates, P.L., filed an
application to register on the Principal Register the mark
displayed below

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91175319
2
for “medical diagnostic imaging services,” in International
Class 44.1
Registration has been opposed by Intuitive Surgical,
Inc. (“opposer”). As grounds for opposition, opposer
asserts that it is the owner of the mark, DA VINCI,
previously used and registered on the Principal Register for
the following goods:
computerized surgical manipulation system
comprised of surgeon's console, master control,
immersive video display, camera image processing
equipment, surgical manipulation system software
and instructional manuals provided as a unit,
patient-side cart with set-up arms and manipulator
slave arms, sterile adaptors to connect arms to
instruments, and a full line of resposable, in
other words, limited re-use tools, namely,
laparoscopes, endoscopes, trocars, cannulas,
cutters, clamps, elevators, gouges, knives, scope
preheaters, light sources, cables and component
parts, electrosurgical instruments, electrocautery
instruments, laser instruments, ultrasound
instruments, lens cleaning, scrub and biopsy
brushes, clip appliers and clips, tack appliers
and tacks, applicators, ligature carriers, needle
holders, clamps, hemostats, graspers, curettes,
instrument guides, ligature passing and knotting
instruments, needle, retractors, snares, stylets,
forceps, dissectors, calipers, scissors, suction
and irrigation probes, sterile drapes, hemostats,
amputation hooks, ostetomes, saws, retainers,

1 Application Serial No. 78728786 was filed on October 7, 2005,
based upon applicant’s assertion of August 1, 2005 as a date of
first use of the mark in commerce. Applicant has disclaimed
“DIAGNOSTIC.” Applicant further submitted the following
description of the mark: “The mark consists of a white Vitruvian
man silhouette image inside of a circle shaded brown in the lower
portion blending to yellow in the upper portion, the right half
of the circle is superimposed within the brown letter "D" in the
brown text "DAVINCI", the text DIAGNOSTIC is yellow and the text
"iMAGING" is brown, the dot over the letter "i" is yellow.” In
addition, applicant submitted the following color statement:
“The color(s) white, brown and yellow is/are claimed as a feature
of the mark.”
Opposition No. 91175319
3
suturing apparatus, measuring tapes, chisels and
contractors, files, skin graft expanders, lancets,
mallets, pliers, hammers, rasps, spatulas, and
strippers; a full line of fda classes i and ii
exempt surgical instruments, namely, scalpels,
scalpel blades and handles, staplers, tackers,
clip appliers, electrocautery tools forceps,
needle holders, guides and drivers, graspers, and
kiteners

in International Class 10.2 Opposer further asserts that it
is the owner of several trademark applications for DA VINCI-
formative marks for closely related goods. Opposer argues
that it has made use of its DA VINCI mark in connection with
the above goods since prior to any date of first use upon
which applicant is entitled to rely; and that applicant’s
mark, when used in connection with applicant’s services so
resembles opposer’s DA VINCI marks for its recited goods as
to be likely to cause confusion, to cause mistake, and to
deceive.
Applicant’s answer consists of a general denial of the
allegations in the notice of opposition.3
Evidentiary Objections
Prior to coming to our determination on the merits of
the case, certain evidentiary objections require our
attention. Applicant has moved to strike opposer’s

2 Registration No. 2628871 issued on October 1, 2002. Section 8
affidavit accepted; Section 15 affidavit acknowledged.
3 In addition, applicant asserts certain affirmative defenses
that are more in the nature of amplifications of its denials of
the allegations contained in the notice of opposition, and have
been so construed.

Opposition No. 91175319
4
testimonial deposition of Mr. Benjamin Gong and associated
exhibits as irrelevant and “beyond the scope of Applicant’s
defense” (brief, p. 4). In addition, applicant has moved to
strike as irrelevant Exhibits 2–7, consisting of copies of
opposer’s asserted applications for its various DA VINCI
formative marks, from opposer’s first notice of reliance.
However, the Board generally does not strike testimony
depositions on grounds other than untimeliness or improper
or inadequate notice. See TBMP §§533.03 and 707.03(c) and
authorities cited therein. Further, the Board does not
strike evidence timely and properly introduced by notice of
reliance. See TBMP §§532 and 707.02(c) and authorities
cited therein. Rather, the Board will consider any
objections raised to such testimony and evidence in our
evaluation of the probative value thereof at final hearing.
See Id. We note in addition that none of the testimony or
exhibits sought to be excluded is outcome determinative.
In view of the foregoing, we have considered all of the
testimony and exhibits submitted by the parties. In doing
so, we have kept in mind the above-noted objections, and we
have accorded whatever probative value the subject testimony
and exhibits merit.
The Record
By operation of Trademark Rule 2.122, 37 C.F.R. §2.122,
the record in this case consists of the pleadings and the
Opposition No. 91175319
5
file of the involved application. In addition, during its
assigned testimony period, opposer submitted the testimony
depositions, with exhibits, of Dr. Thomas Boyle, a
diagnostic radiologist; Mr. Christopher Simmonds, opposer’s
Senior Director of Marketing Services; Mr. David Scott,
opposer’s Senior Product Manager for Vision Systems; Mr.
Steven Annen, opposer’s Director of Marketing for Product
Development; and Mr. Benjamin Gong, opposer’s Vice President
of Finance. In addition, opposer filed notices of reliance
upon the following: (1) status and title copies of its
pleaded registration showing that opposer is the current
owner and that such registration is valid and subsisting;
(2) copies of its six pending trademark applications for
various DA VINCI-formative marks; (3) a notice of
abandonment for one of opposer’s DA VINCI-formative
trademark applications; (4) copies of opposer’s discovery
requests to applicant and applicant’s responses thereto; and
(5) entries from various printed publications.
During its assigned testimony period, applicant
submitted a notice of reliance upon (1) third-party
registrations for DA VINCI-formative marks; (2) the file
history of opposer’s pleaded registration and one of its
asserted applications; (3) copies of applicant’s discovery
requests to opposer and opposer’s responses thereto; and (4)
a copy of 21 C.F.R. § 862.2160.
Opposition No. 91175319
6
Opposer and applicant filed main briefs on the case,
and opposer filed a reply brief.
Opposer’s Standing and Priority of Use
Because opposer has properly made its pleaded
registration of record, we find that opposer has established
its standing to oppose registration of applicant’s mark.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000); and Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Moreover, because opposer’s pleaded registration is of
record, Section 2(d) priority is not an issue in this case
as to the DA VINCI mark therefor and goods covered thereby.
See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, 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).
Opposition No. 91175319
7
Opposer asserts that it “has protectable rights in its
unregistered marks” (brief, p. 27) that are the subject of
its pending applications noted above.4 Opposer further
asserts that it has made prior use of the marks in its
asserted applications. We note, however, that the marks in
its applications are less similar to applicant’s involved
mark than the DA VINCI mark in opposer’s pleaded
registration. Also, and as noted above, opposer’s asserted
applications all recite goods that are essentially identical
to those in its pleaded registration. We will therefore
concentrate our discussion of the issue of likelihood of
confusion on that mark of opposer’s which is closest to the
mark for which applicant is seeking registration, namely the
DA VINCI mark in opposer’s pleaded registration.
The Marks
We turn to the first du Pont factor, i.e., whether
applicant’s mark and opposer’s DA VINCI mark are similar or
dissimilar when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot,
supra. The test, under the first du Pont factor, is not
whether the marks can be distinguished when subjected to a

4 One of opposer’s applications asserted above, for the mark DA
VINCI S for goods essentially identical to those recited in its
pleaded registration, matured into a registration subsequent to
the close of testimony herein.

Opposition No. 91175319
8
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods
offered under the respective marks is likely to result.
In this case, we find that applicant’s mark,

is highly similar to opposer’s mark, DA VINCI. In comparing
the marks, we find that DAVINCI is the dominant element of
applicant’s mark, and accordingly it is entitled to more
weight in our analysis. It is a well-established principle
that, in articulating reasons for reaching a conclusion 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 the ultimate conclusion rests on a consideration of
the marks in their entireties. In re National Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
In applicant’s mark, the term “DIAGNOSTIC” is
disclaimed, and the term is at best highly descriptive of
applicant’s “medical diagnostic imaging services” and is
Opposition No. 91175319
9
subordinate to DAVINCI. In addition, the term “IMAGING,”
while not disclaimed also is clearly descriptive of
applicant’s services. The design of the Vitruvian man
inside a circle is a stylization of a famous sketch by
Leonardo Da Vinci5 and further reinforces DAVINCI as the
dominant portion of applicant’s mark. Moreover, when a mark
comprises both wording and a design, the wording is normally
accorded greater weight because it would be used by
purchasers to request the goods or services. In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987). For these
reasons, we consider DAVINCI to be the dominant feature of
applicant’s mark. Moreover, the significance of the term
DAVINCI in applicant’s mark is reinforced by its location as
the first word in the mark. Presto Products Inc. v. Nice-
Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)(“it is
often the first part of a mark which is most likely to be
impressed in the mind of a purchaser and remembered”). See
also Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992)(upon encountering the marks, consumers must first
notice the identical lead word).
In comparing the two marks, we note that the
applicant’s mark incorporates the entirety of registrant’s
DA VINCI mark. Likelihood of confusion is often found where

5 Opposer’s Notice of Reliance, Exhibit 11.
Opposition No. 91175319
10
the entirety of one mark is incorporated within another. In
re Denisi, 225 USPQ 624, 626 (TTAB 1985)(PERRY’S PIZZA for
restaurant services specializing in pizza and PERRY’S for
restaurant and bar services); Johnson Publishing Co. v.
International Development Ltd., 221 USPQ 155, 156 (TTAB
1982)(EBONY for cosmetics and EBONY DRUM for hairdressing
and conditioner); In re South Bend Toy Manufacturing
Company, Inc., 218 USPQ 479, 480 (TTAB 1983)(LIL’ LADY BUGGY
for toy doll carriages and LITTLE LADY for doll clothing).
The presence or absence of a space between virtually
the same words, in this case DAVINCI in applicant’s mark and
opposer’s DA VINCI mark, is not a significant difference.
Stockpot, Inc. v. Stock Pot Restaurant, Inc., 220 USPQ 52,
54 (TTAB 1983), aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed.
Cir. 1984) (“There is no question that the marks of the
parties [STOCKPOT and STOCK POT] are confusingly similar.
The word marks are phonetically identical and visually
almost identical”); and In re Best Western Family Steak
House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be
little doubt that the marks [BEEFMASTER and BEEF MASTER] are
practically identical”). The wording DAVINCI comprising the
first words of applicant’s mark is nearly identical to
opposer’s DA VINCI mark.
As to sound, it is settled that there is no correct way
to pronounce a trademark. See In re Belgrade Shoe, 411 F.2d
Opposition No. 91175319
11
1352, 162 USPQ 227 (CCPA 1969) and Interlego AG v.
Abrams/Gentile Entertainment Inc., 63 USPQ2d 1862 (TTAB
2002). See also In re Microsoft Corp., 68 USPQ2d 1195 (TTAB
2003) (it is not possible to control how consumers will
vocalize marks). Nonetheless, we see no reason why DAVINCI
and DA VINCI would not be identical in pronunciation. Thus,
when taken as a whole, the marks DAVINCI DIAGNOSTIC IMAGING
and design and DA VINCI are somewhat similar in sound.
Furthermore, while the term DAVINCI or DA VINCI in the marks
appears to be arbitrary as suggested by opposer6 or perhaps
suggests genius or rebirth as suggested by applicant,7 there
is no reason why the terms would not have the same
connotation as applied to applicant’s services or opposer’s
goods. Thus, the marks are highly similar in connotations
and convey highly similar overall commercial impressions.
In view of the similarities between the marks as a
whole in appearance, sound, connotation and overall
commercial impression, this du Pont factor favors opposer.
Strength of Opposer’s Mark
In coming to our determination regarding the similarity
of the parties’ marks, we have considered applicant’s
arguments directed to the strength of opposer’s DA VINCI
mark. Applicant argues that “there are other registered
trademarks with term [sic] DA VINCI or DAVINCI in the health

6 Brief, p. 31.
Opposition No. 91175319
12
care field, namely for ceramics for use in cosmetic
dentistry, dental ceramics, manufacturing of custom dental
porcelain veneers and dental laboratory services.”8
Applicant further argues that “there are other registered DA
VINCI trademarks for goods with robotic features such as
automated laboratory instruments and machines to make
paper.”9 However, the Federal Circuit has made it clear
that:
The probative value of third-party trademarks depends
entirely upon their usage. E.g., Scarves by Vera, Inc.
v. Todo Imports, Ltd., 544 F.2d 1167, 1173 (2d Cir.
1976) (“The significance of third-party trademarks
depends wholly upon their usage. Defendant introduced
no evidence that these trademarks were actually used by
third parties, that they were well promoted or that
they were recognized by consumers.”)… As this court has
previously recognized where the “record includes no
evidence about the extent of [third-party] uses … [t]he
probative value of this evidence is thus minimal.” Han
Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1338
(Fed. Cir. 2001) (emphasis added).

Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1689, 73 USPQ2d 1689, 1693 (Fed.
Cir. 2005).
Here, applicant has presented no evidence of use so we
must accord this evidence minimal weight. Even if we
considered the registrations, we note that the dental
ceramics and dental services, as well as the automated

7 Brief, p. 14.
8 Brief, p. 29; applicant’s notice of reliance, exhibits 4-7, 22-
24, 34, 55.
9 Id., applicant’s notice of reliance, exhibits 27, 37.

Opposition No. 91175319
13
laboratory instruments and paper-making machines, are less
similar to the goods and services recited in the pleaded
registration and involved application herein. The goods and
services recited in the additional third-party registrations
made of record by applicant are even farther afield from the
goods and services at issue herein, including day camp
services (No. 3260987), office and institutional furniture
(No. 3577959), golf clubs (No. 2967121), and food products
(No. 1338226).
We add that it is proper to consider these types of
registrations as a form of a dictionary definition. In re
Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006)
(“[T]hird-party registrations can be used in the manner of
a dictionary definition to illustrate how a term is
perceived in the trade or industry”). See also In re J.M.
Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987) (“[T]hird
party registrations are of use only if they tend to
demonstrate that a mark or a portion thereof is suggestive
or descriptive of certain goods and hence is entitled to a
narrow scope of protection”).
In this case, use by third-parties of the term DAVINCI
or DA VINCI on a wide range of goods and services suggests
that the term possesses a desirable connotation as a result
of its association with the famous Renaissance individual of
the same name. However, regarding the nature of the term
Opposition No. 91175319
14
DAVINCI or DA VINCI in the context of medical diagnostic
imaging services and computerized surgical manipulation
systems, the third-party evidence does not support a finding
that prospective purchasers will conclude that such term
suggests a feature of the goods or services or even that it
necessarily is a laudatory term.
Therefore, considering the above third-party
registrations for other less closely related products and
services and the prior case law, we find that the term
DAVINCI or DA VINCI for the goods identified in opposer’s
registration, to the extent that it is laudatory, is only
slightly laudatory, and it is not entitled to only a narrow
scope of protection.
The Goods and Services
With respect to the similarity of opposer’s goods and
applicant’s services, it is well established that the goods
or services of the parties need not be similar or
competitive, or even offered through the same channels of
trade, to support a holding of likelihood of confusion. It
is sufficient that the respective goods or services of the
parties are related in some manner, and/or that the
conditions and activities surrounding the marketing of the
goods or services are such that they would or could be
encountered by the same persons under circumstances that
could, because of the similarity of the marks, give rise to
Opposition No. 91175319
15
the mistaken belief that they originate from the same
source. See Hilson Research, Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423 (TTAB 1993); and In re
International Telephone & Telephone Corp., 197 USPQ 910, 911
(TTAB 1978).
The services recited in the involved application are
“medical diagnostic imaging services.” As identified, these
services are not limited to any specific type of diagnostic
imaging and, as a result, must be presumed to include
diagnostic imaging services in all fields of medicine,
including surgery. See Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods [or services].”)
Furthermore, in its brief, applicant explains that,
through its licensee, it “provides the following medical
diagnostic imaging services: The capture and radiologist
interpretation of images generated with modalities such as
MRI, CT, PET/CT, and Digital Mammography.”10 Applicant
further indicates that its services “would also include the
capture and interpretation of, among others, plain film x-
rays.”11 MRI, or magnetic resonance imaging, is a non-
invasive medical imaging technology which is “particularly

10 Brief, p. 18-9.
Opposition No. 91175319
16
useful for imaging the brain and spine, as well as the soft
tissues of joints and the interior structure of bones.”12
In addition, “MRI is being used increasingly during
operations, particularly those involving very small
structures in the head and neck, as well as for preoperative
assessments and planning. Intraoperative MRIs have shown
themselves to be safe as well as feasible, and to improve
the surgeon’s ability to remove the entire tumor or other
abnormality.”13 CT, or computer tomography, scans “are used
to image a wide variety of body structures and internal
organs.”14 “Physicians may order CT of the sinuses to
provide an accurate map for surgery.”15 PET, or positron
emission tomography, scans “are generally used to measure
metabolic rates quantitatively in normal and abnormal
tissues”16 and are particularly useful in the detection of
“brain tumors and assessment of the degree of malignancy.”17
Thus, as identified and also based upon the evidence of
record, applicant’s services provide a variety of medical
diagnostic imaging, including imaging used in connection
with surgery.

11 Brief, p. 19.
12 The Gale Encyclopedia of Medicine, Vol. 3, Third Ed. (2006).
13 Id.
14 The Gale Encyclopedia of Medicine, Vol. 2, Third Ed. (2006).
15 Id.
16 Magill’s Medical Guide, Fourth Revised Ed., Volume 4 (2008).
17 Id.
Opposition No. 91175319
17
The goods in opposer’s pleaded registration are a
“computerized surgical manipulation system,” including such
components as “immersive video display,” “camera image
processing equipment” and surgical instruments. Simply put,
opposer’s goods allow a surgeon to perform surgery with the
aid of a computer, along with video and camera imaging.18
As noted above, applicant’s services include medical
diagnostic imaging used for surgical applications. Such
services are related to opposer’s goods in that the images
created by the recited services may be used to facilitate
surgical procedures performed using opposer’s computerized
surgical manipulation system. The parties disagree whether,
as identified, opposer’s goods under its DA VINCI mark allow
display of diagnostic images, including those created by
applicant’s licensee.19 Nonetheless, while applicant argues
that its services are neither related to nor competitive
with opposer’s goods,20 applicant presents no arguments or
evidence to support a finding that the images created by its
licensee may not be used in connection with surgery
performed using opposer’s goods. The issue is not whether
purchasers would confuse the goods or services themselves,
but rather whether there is a likelihood of confusion as to

18 Annen Testimony, p. 1, 14, 25-6; Simmonds Testimony, 12-4;
Scott Testimony, p. 8, 10, 13-4, 16-7, 19-20, 22, 24-5.
19 Opposer’s brief, p. 35-6; applicant’s brief, p. 19-21; reply
brief, p. 8-10.
20 Brief, p. 19-21.
Opposition No. 91175319
18
the source thereof. In re Rexel Inc., 223 USPQ 830 (TTAB
1984).
In other words, applicant’s services, as identified,
provide medical diagnostic imaging without restriction and
thus must be presumed to include imaging used to assist in
diagnosis of conditions that may be remedied through
surgery. As discussed above, the evidence of record further
supports such a finding. As a result, we find that
applicant’s services may be used in connection with
opposer’s goods which are used for computer, camera and
video-aided surgery. Applicant’s services are therefore
related to opposer’s goods, and this du Pont factor also
favors opposer.
Channels of Trade

Because of our finding above that the goods and
services are related, and because there are no recited
restrictions as to their channels of trade or classes of
purchasers, we must assume that the goods and services are
available in all the normal channels of trade to all the
usual purchasers for such goods and services, and that the
channels of trade and the purchasers for opposer’s goods as
well as applicant’s services would be the same. See
Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910
(TTAB 2000). See also Octocom Systems, Inc. v. Houston
Computers Services Inc., supra (“The authority is legion
Opposition No. 91175319
19
that the question of registrability of an applicant’s mark
must be decided on the basis of the identification of goods
set forth in the application regardless of what the record
may reveal as to the particular nature of an applicant’s
goods, the particular channels of trade or the class of
purchasers to which the sales of goods are directed.”) See
also Paula Payne Products v. Johnson Publishing Co., supra.
In this case, physicians, surgeons in particular, will
encounter both opposer’s goods and applicant’s services, and
these goods and services are presumed to move in all
channels of trade that would be normal for purchase and use
by surgeons.
We find that, as a result of the foregoing, this du
Pont factor also favors opposer.
Conditions of Sale
The next du Pont factor discussed by the parties is
that of the conditions of sale. Applicant asserts that
opposer’s goods are expensive, and would be purchased by
careful and sophisticated users.21 Applicant further
asserts that the end users of opposer’s goods are hospital
administrators and surgeons, while the purchasers of its
services are medical patients.22 However, applicant’s
narrow view of the purchasers of the parties’ goods and

21 Brief, p. 26-7.
22 Id.

Opposition No. 91175319
20
services ignores the fact that its services will be retained
by physicians, including surgeons, and that opposer’s goods
will be used to perform surgical procedures. In other
words, the same medical professionals are likely to
encounter the parties’ marks as used in connection with
their respective goods and services. Moreover, it is
settled that sophisticated purchasers are not necessarily
knowledgeable in the field of trademarks or immune from
source confusion. See In re Decombe, 9 USPQ2d 1812, 1814-
1815 (TTAB 1988).
Thus, this du Pont factor also favors opposer.
Actual Confusion
Another du Pont factor discussed by the parties is the
lack of instances of actual confusion. Applicant asserts
that the absence of actual confusion suggests no likelihood
of confusion. However, it is not necessary to show actual
confusion in order to establish likelihood of confusion.
See Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d
1546, 223 USPQ 1025 (Fed. Cir. 1990). Moreover, on the
record before us there is no evidence as to whether there
has been any opportunity for confusion to occur. Thus, this
du Pont factor is neutral.
Summary
We have carefully considered all of the evidence
pertaining to priority of use and the relevant du Pont
Opposition No. 91175319
21
factors, as well as all of the parties’ arguments with
respect thereto, including any evidence and arguments not
specifically discussed in this opinion.
We conclude that opposer has established its standing
to bring this proceeding; its priority of use; and that a
likelihood of confusion exists between its DA VINCI mark and
applicant’s DAVINCI DIAGNOSTIC IMAGING and design mark, as
used in connection with their respective goods and services.
To the extent that any of applicant’s points raise a doubt
about our conclusion, all doubt on the issue of likelihood
of confusion must be resolved in favor of the prior user and
against the newcomer. See San Fernando Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 2
(CCPA 1977).
DECISION: The opposition is sustained, and
registration to applicant is refused.