Invivo Corporation

Trademark Trial and Appeal Board

Sep 5, 2007

No. 78670679 (T.T.A.B. Sep. 5, 2007)

Mailed: 9/5/07

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Invivo Corporation
________

Serial No. 78670679
_______

Virginia R. Richard and Sanjana Chopra of Winston & Strawn
for Invivo Corporation.

W. Wendy Jun, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______

Before Quinn, Drost and Bergsman, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Invivo Corporation to
register the mark TELEPAK for “wireless telemetry
transmitter for monitoring vital signs” in International
Class 10.1
Registration was refused by the trademark examining
attorney under Section 2(d) of the Trademark Act on the

1 Application Serial No. 78670679, filed July 14, 2005, based on
an allegation of a bona fide intention to use the mark in
commerce.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 78670679
2
ground that applicant’s mark, when applied to applicant’s
goods, so resembles the previously registered mark TELEPAC
for “containers for use in sterilizing medical equipment;
containers for use in sterilizing operating telescopes;
arthroscopes; [and] laparoscopes” in International Class
10.2
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.3
Applicant argues that the goods offered under the
involved marks, while broadly characterized as medical
products, are distinctly different in nature, purpose and
function, and that the respective purchasers of the goods
are sophisticated consumers in the medical field.
Applicant asserts that, in stark contrast to registrant’s
goods which are intended for use during interventional
medical procedures, its goods are intended to be used to
assist medical personnel in measuring and monitoring the

2 Registration No. 3026696, issued December 13, 2005.
3 Applicant’s appeal brief and reply brief are both accompanied
by exhibits. The examining attorney, in her brief, made no
mention of the exhibits attached to applicant’s appeal brief.
Trademark Rule 2.142(d) provides that the record in the
application should be complete prior to the filing of an appeal.
Exhibits attached to a brief that were not made of record during
the examination are untimely, and generally will not be
considered. TBMP § 1203.02(e) (2d ed. rev. 2004). The exhibits
attached to applicant’s appeal brief and reply brief are untimely
and, accordingly, this evidence has not been considered.
Ser No. 78670679
3
vital signs of ambulatory patients in a hospital, nursing
home or home-care setting. According to applicant,
registrant’s goods are purchased by surgeons or hospital
purchasing agents assigned to the supply of goods used
during surgery, while applicant’s monitors would be
purchased by primary care physicians for post-surgical and
non-surgical patients, as well as for patients in nursing
homes and in-home care environments. According to
applicant, the goods would not be used during the same
medical procedure because applicant’s monitor is intended
for use on mobile patients whereas registrant’s goods are
intended for use on immobilized patients in an operating
room environment. Applicant has submitted literature about
its goods.4
The examining attorney maintains that the marks are
phonetic equivalents, sounding the same and looking
similar. As to the goods, the examining attorney contends
that “they are closely related because they are both
medical devices that are commonly manufactured by the same
company and thus emanate from the same source.” (Brief, p.

4 Applicant, in its reply brief, also asserts that the cited mark
“appears to have been discontinued from use” based on its search
of registrant’s website. This allegation constitutes an
impermissible collateral attack on the cited registration. Thus,
we have given no consideration to the allegation. See In re Jump
Designs LLC, 80 USPQ2d 1370, 1376 (TTAB 2006).
Ser No. 78670679
4
3). The examining attorney has relied upon third-party
registrations that purportedly show that the same companies
sell both medical monitoring devices as well as
arthroscopes and laparoscopes. The examining attorney also
submitted articles retrieved from the Internet to show that
a patient’s vital signs must be monitored after
laparoscopic surgery, and that hospitals and doctors using
arthroscopes and laparoscopes are also using monitors to
check on patients’ vital signs post-operation. In further
support of the refusal, the examining attorney introduced
excerpts of four third-party websites of online medical
supply retailers/distributors.5
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in 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). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods

5 All of the examining attorney’s evidence goes to the
relatedness between applicant’s goods and registrant’s
arthroscopes and laparoscopes; none of the evidence mentions
containers for use in sterilizing medical or operating equipment.
Ser No. 78670679
5
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See
also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531 (Fed. Cir. 1997). One other key factor in this case
concerns the conditions under which and buyers to whom
sales of the goods at issue are made.
With respect to the involved marks, we examine the
similarities and dissimilarities of the marks in their
appearance, sound, meaning, and commercial impression.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 73 USPQ2d at 1692. The test is not whether
the marks can be distinguished when subjected to a side-by-
side comparison, but rather whether the marks are
sufficiently similar in their entireties that confusion as
to the source of the goods offered under the respective
marks is likely to result.
The marks TELEPAC and TELEPAK differ by only their
last letter. The marks are phonetically equivalent and,
thus, identical in sound. The difference of one letter in
the marks, especially because it is the last letter and the
letters “C” and “K” happen to be phonetically
interchangeable, has essentially no effect on the
appearances of the marks. Simply put, the marks are
virtually identical in appearance. As to meaning, the
Ser No. 78670679
6
marks could convey somewhat different connotations, but
there is no evidence one way or the other. For example, it
would appear that the “TELE” portion of applicant’s mark
refers to the telemetry function of applicant’s
transmitter, whereas the “TELE” portion of registrant’s
mark might refer to the telescopic function of arthroscopes
and laparoscopes. We are less sure, however, as to the
meaning of “PAC” and “PAK” in the respective marks. Given
the lack of evidence on the issue, our analysis as to the
connotation of the marks is somewhat speculative.
Nevertheless, in view of the significant similarities
between the marks in sound and appearance, we find that
they would engender virtually identical overall commercial
impressions.
The factor of the similarities between the marks
weighs in favor of finding a likelihood of confusion.
We next turn to a consideration of the goods. It is
not necessary that the respective goods be competitive, or
even that they move in the same channels of trade to
support a holding of likelihood of confusion. It is
sufficient that the respective goods are related in some
manner, and/or that the conditions and activities
surrounding the marketing of the goods are such that they
would or could be encountered by the same persons under
Ser No. 78670679
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circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they
originated from the same producer. In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991).
Applicant’s product is a patient-worn telemetry
transmitter that is used in monitoring the ECG
(electrocardiogram) and SpO2 (saturation of peripheral
oxygen) levels of ambulatory patients. Applicant’s product
literature states the following:
Tired of running back and forth from
your patient’s bedside to the central
monitoring station just to see if the
telemetry transmitter is functioning
properly? The new lightweight TelePak
ECG/SpO2 transmitter with its unique
“Quick View” display window, allows you
to visualize and verify proper
electrode placement and waveform
transmission with “Just One Look” –
without ever leaving the patient’s
bedside.

Providing vital clinical information at
the patient bedside - saving the
clinician’s time and unnecessary steps
to and from the central monitoring
station.

In the event of electrode/lead failure
Telepak will “Automatically” select an
alternative monitoring lead.

Optional SpO2 feature incorporates the
convenience of monitoring two clinical
parameters with one patient device.

Ser No. 78670679
8
Innovative ambulatory telemetry to meet
your needs for maximum patient care and
efficiency.

With respect to the types of goods listed in the cited
registration, arthroscopes and laparoscopes are highly
specialized, pencil-sized surgical instruments that contain
a small lens and a lighting system. Arthroscopes are used
in connection with joints (e.g., knees), while laparoscopes
are used to repair/remove internal organs. These
instruments allow surgeons to conduct diagnostic and
surgical procedures on patients by making only small
incisions. There is no information in the record relating
to containers for use in sterilizing medical equipment and
operating telescopes.
The burden is on the examining attorney to show that
applicant’s and registrant’s goods are related. In
determining the issue of likelihood of confusion in ex
parte cases, the Board must compare applicant’s goods as
set forth in its application with the goods as set forth in
the cited registration. In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). Thus, although extrinsic evidence reveals
certain characteristics of applicant’s goods (e.g., that
they are patient-worn or are for ambulatory patients), the
goods are not so limited. Although we have considered the
evidence to better understand the nature of applicant’s
Ser No. 78670679
9
product, we have compared the goods on the basis of the
respective identifications. Cf. In re Trackmobile Inc., 15
USPQ2d 1152 (TTAB 1990).
The goods, on the face of the respective
identification of goods, are distinctly different in terms
of nature, use and function. Both are highly specialized
medical instruments and devices for different purposes.
Nonetheless, the examining attorney is correct in stating
that applicant’s and registrant’s goods fall under the
broad category of medical equipment, and that the goods are
purchased and used by the same classes of consumers,
including doctors, hospitals and out-patient surgical
centers. The examining attorney has attempted to solidify
her finding of a connection between the goods by
introducing third-party registrations and information
retrieved from the Internet.
The examining attorney has relied upon seven third-
party registrations of marks registered by the same entity
for both arthroscopes and laparoscopes on the one hand, and
various types of medical monitors on the other. Third-
party registrations which individually cover a number of
different items (and/or services) and which are based on
use in commerce serve to suggest that the listed goods
and/or services are of a type that may emanate from a
Ser No. 78670679
10
single source. In re Albert Trostel & Sons Co., 29 USPQ
1783 (TTAB 1993). The problem with the examining
attorney’s evidence herein is that six of the registrations
are based not on use, but rather on a foreign filing.6 The
seventh registration is a house mark, as evidenced by the
identification of goods, with the prefatory language “house
mark,” followed by a listing of a wide range of medical
products. Generally, registrations of house marks are
given little probative value in terms of showing that the
various goods listed therein are related because they cover
such a disparate range of goods. See In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
Further, while the registrations list “monitors,” none
would appear to be of the type made by applicant.
Consequently, the third-party registrations of record are
insufficient to show that the goods at issue are
commercially or otherwise closely related in that they are
of a type that may emanate from a single source. See,
e.g., In re W.W. Henry Co., 82 USPQ2d 1213, 1215 (TTAB
2007).
The examining attorney further has submitted excerpts

6 We also note that none of the registrations indicates that the
registrant has filed a Section 8 affidavit showing that there has
been use in commerce in the United States.
Ser No. 78670679
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from the websites of four online medical supply
retailers/distributors showing that these entities sell
both types of goods, that is, vital signs monitors and
laparoscopes and arthroscopes. This evidence likewise is
not persuasive to show a connection between these
distinctly different products. The websites show that
these four online retailers/distributors have assembled a
wide range of medical equipment for sale, including
monitors, operating lights, weight scales, exam tables and
defibrillators. The monitors and arthroscopes and
laparoscopes offered for sale are manufactured by a variety
of entities under various different marks; there is not one
instance of such goods emanating from the same
manufacturer, let alone from the same manufacturer under
the same mark. The fact that medical supply
retailers/distributors sell all of these goods does not
necessarily mean that they are commercially related. What
this evidence does show for purposes of our analysis,
however, is that monitors and arthroscopes and laparoscopes
can cost several thousands of dollars; this cost further
contributes to the sophisticated nature of any purchasing
decision.
The examining attorney also points to an article that
includes reference to the fact that “vital signs must be
Ser No. 78670679
12
monitored after laparoscopic surgery, as with any types of
surgery.” Therefore, the examining attorney asserts, “it
is very likely that hospitals and doctors performing
surgery using arthroscopes and laparoscopes are also using
applicant’s products to monitor the patients after
arthroscopic or laparoscopic surgeries.” (Brief, p. 5).
We are not persuaded. Most, if not all, surgeries require
that the patient’s vital signs be monitored. This fact,
however, should not lead to the conclusion that vital signs
monitors are commercially related to all other specialized
instruments that are being used during or after surgery.
Against the backdrop of this minimal evidence bearing
on the relatedness of the goods is the fact that, even
assuming that applicant’s and registrant’s goods would be
purchased by the same doctors, hospitals, out-patient
surgical centers and other medical institutions, it is
readily apparent that the purchasing decisions for such
goods would be made by highly sophisticated and
knowledgeable buyers under conditions of sale which would
further minimize any likelihood of confusion as to source
or affiliation. As Astra Pharmaceutical Products, Inc. v.
Beckman Instruments, Inc., 718 F.2d 1201, 220 USPQ 786, 791
(1st Cir. 1983) makes clear, for a likelihood of confusion
to exist, “it must be based on confusion of some relevant
Ser No. 78670679
13
person, i.e., a customer or user, and there is always less
likelihood of confusion where goods are expensive and
purchased and used by highly specialized individuals after
careful consideration.” It has long been recognized that
purchasers of medical equipment, whether hospital personnel
or physicians, are highly sophisticated and, as such, are
more likely to distinguish between marks and goods than is
the general consuming public. In re N.A.D., 754 F.2d 996,
224 USPQ 969, 971 (Fed. Cir. 1985); and Pfizer Inc. v.
Astra Pharmaceutical Products Inc., 858 F.Supp. 1305, 33
USPQ2d 1545, 1562 (S.D.N.Y. 1994) [“[t]he consumers here
are doctors, as sophisticated a group as one could
imagine”].
The evidence indicates that laparoscopes and
arthroscopes are used by a variety of doctors, including
general surgeons and orthopedic surgeons, gynecologists,
and urologists. These are specialists who are highly
trained in their field and who, by necessity, must be very
sophisticated about the selection and use of specific
instruments during a medical procedure. See, e.g., Warner-
Hudnut, Inc. v. Wander Co., 280 F.2d 435, 126 USPQ 411, 412
(CCPA 1960) [physicians constitute “a highly intelligent
and discriminating public”]. Because the products at issue
are all used for patient care, we can safely assume that
Ser No. 78670679
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the doctors and hospital personnel responsible for the
selection and purchase of those products will exercise a
high degree of care in purchasing decisions to ensure that
the products come from a reputable source, therby further
minimizing a likelihood of confusion. Their
“sophistication is important and often dispositive because
‘[s]ophisticated consumers may be expected to exercise
greater care.’” Electronic Design & Sales Inc. v.
Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d
1388, 1392 (Fed. Cir. 1992), quoting from Pignons S.A. de
Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 212
USPQ 246, 252 (1st Cir. 1981). While, in this case, it is
possible for the same doctor, medical practice or hospital
to purchase both applicant and registrant’s goods, the
Federal Circuit has cautioned that it is error to deny
registration simply because an applicant markets and sells
its goods in the same general field as those promoted and
sold by the registrant (e.g., the medical field). See
Electronic Design & Sales, 21 USPQ2d at 1391.
When consumers exercise heightened care in evaluating
products before making purchasing decisions, there is not a
strong likelihood of confusion. Electronic Design & Sales
Inc., 21 USPQ2d at 1392 [“there is always less likelihood
of confusion where goods are...purchased after careful
Ser No. 78670679
15
consideration.”]. As Professor McCarthy notes, “the price
level of the goods...is an important factor in determining
the amount of care the reasonably prudent buyer will use.
If the goods...are relatively expensive, more care is taken
and buyers are less likely to be confused as to source or
affiliation.” 3 McCarthy on Trademarks and Unfair
Competition, § 23:95 (4th ed. 1998). Similarly, “[w]here
the relevant buyer class is composed solely of
professional, or commercial purchasers, it is reasonable to
set a higher standard of care than exists for consumers.”
Id. at § 23:101.
In sum, both types of products involved in this appeal
would be bought by highly knowledgeable, discriminating and
sophisticated purchasers after thorough deliberation.
Further, the goods are distinctly different and relatively
expensive. Given the knowledge, care and deliberation
required of doctors, hospitals and other medical
institutions in making the purchasing decisions with
respect to applicant and registrant’s goods, it is unlikely
that they would be confused.
The connection between applicant’s wireless telemetry
transmitters for monitoring vital signs and registrant’s
containers for use in sterilizing medical equipment;
containers for use in sterilizing operating telescopes;
Ser No. 78670679
16
arthroscopes; and laparoscopes is so tenuous that the
public would not view the goods as having a common source,
even when sold under virtually identical marks. In sum,
the examining attorney has not met her burden of showing
that applicant and registrant’s goods are related. With
scant evidence that the goods are related, the fact that
the marks used in connection therewith are virtually the
same is not sufficient to demonstrate a likelihood of
confusion. Based on the record before us, we see the
likelihood of confusion between the marks as amounting to
only a speculative, theoretical possibility. See In re
Digirad Corp., 45 USPQ2d 1841 (TTAB 1998) [no likelihood of
confusion between the mark DIGIRAD for gamma radiation
sensors, signal processors and display apparatus for use in
medical isotopic tracing and nuclear imaging and mark
DIGIRAY and design for electronic digital xray system
comprised of an x-ray scanning beam tube and detector for
medical use]. Language by our primary reviewing court is
helpful in resolving the likelihood of confusion issue in
this case:
We are not concerned with mere
theoretical possibilities of confusion,
deception, or mistake or with de
minimis situations but with the
practicalities of the commercial world,
with which the trademark laws deal.
Ser No. 78670679
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Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 21 USPQ2d at 1391, citing Witco Chemical Co. v.
Whitfield Chemical Co., Inc., 418 F.2d 1403, 1405, 164 USPQ
43, 44-45 (CCPA 1969), aff'g 153 USPQ 412 (TTAB 1967).
In sum, the differences between the goods and the
sophistication of the purchasers for such goods outweigh
the similarities between the marks.
Decision: The refusal to register is reversed.